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Ancillary Regulations EPC1973

VIEWS: 536 PAGES: 466

									                                                                                           2007
                                                                                    European Patent Convention
                                                                                    Ancillary Regulations to the
                                                                                                                   Ancillary Regulations
                                                                                                                   to the European Patent
                                                                                                                   Convention

European Patent Office (EPO)
                                                                                                                   2007
Munich                        The Hague                 Vienna
Headquarters                  Patentlaan 2              Rennweg 12
Erhardtstr. 27                2288 EE Rijswijk          1030 Vienna
80469 Munich                  Netherlands               Austria
Germany                       Tel. +31 (0)70 340-2040   Tel. +43 (0)1 52126-0
Tel. +49 (0)89 2399-0         Fax +31 (0)70 340-3016    Fax +43 (0)1 52126-3591
Fax +49 (0)89 2399-4560       Postal address            Postal address
Postal address                Postbus 5818              Postfach 90
80298 Munich                  2280 HV Rijswijk          1031 Vienna
Germany                       Netherlands               Austria

                              Berlin                    Brussels Bureau
                              Gitschiner Str. 103       Avenue de Cortenbergh, 60
                              10969 Berlin              1000 Brussels
                              Germany                   Belgium
                              Tel. +49 (0)30 25901-0    Tel. +32 (0)2 27415-90
                              Fax +49 (0)30 25901-840   Fax +32 (0)2 20159-28
                              Postal address
                              10958 Berlin
                              Germany                   www.epo.org




ISBN 3- 89605- 087-7
                         Europäisches           European Patent       Office européen
                         Patentamt              Office                des brevets




                      ANCILLARY REGULATIONS
                      TO THE
                      EUROPEAN PATENT CONVENTION

                      2007




The collection contains texts published in the EPO's Official Journal including issue 12/2006. This publication
has been brought into line with the new visual identity of the EPO.
Published by:
European Patent Office
Directorate General 3 (Appeals)
Directorate 3.0
Legal Research and Administration

Position at 01.01.2007

Printed by:
J. Gotteswinter GmbH
Graphischer Betrieb
Joseph-Dollinger-Bogen 22
80807 München

© 2007 European Patent Office

ISBN 3-89605-087-7
                                                                                                                 FOREWORD




FOREWORD
This is the 2007 edition of the "Ancillary Regulations to the European Patent Convention", a collection of the most important
texts relating to the European patent grant procedure in general, as compiled by the EPO's Directorate-General 3. It
comprises in particular:

●    decisions by the Administrative Council of the European Patent Organisation

●    decisions by the President of the EPO

●    rules of procedure of the Boards of Appeal and of the Enlarged Board of Appeal of the EPO

●    information from the European Patent Office

●    agreements between the EPO and national offices or WIPO

●    notices about important forms

●    legal advice from the EPO

●    regulations governing professional representation before the EPO and the European qualifying examination.

The collection contains texts published in the EPO's Official Journal between 1978 and issue 12 of 2006.

The individual regulations are arranged by the articles or rules to which they relate. A keyword index is provided to enable the
reader to search for particular terms. An additional overview of all regulations arranged by publication date in the Official
Journal of the EPO has been included, to assist location of the regulations. Some texts which are no more relevant have been
omitted.

The collection is a handy, up-to-date work of reference for the most important key legal texts used in the implementation of
the European Patent Convention.

Peter Messerli
EPO Vice-President,
Directorate-General 3 (Appeals)




                                                                                                                               i
     Compiled and Edited by: Legal Research Service for the DG3
            Data transfer and formating: Eva Schumacher




ii
                                                                                               Table of Contents




Table of Contents
Foreword

Index

List of regulations in chronological order as they have been published in the OJ EPO


I. DECISIONS BASED ON ARTICLES OF THE EPC, AND NOTICES

A r t i c l e 7 EPC
Integration of INPADOC into the EPO, Creation of an EPO sub-office in Vienna
        OJ 1990, 492                                                                                            3

A r t i c l e 10(2) EPC
1.      Setting up of a Filing Office in Berlin
        OJ 1989, 218                                                                                            4
2.      Setting-up of a further filing office in Munich (‘Pschorrhöfe’)
        OJ 1991, 223                                                                                            4

A r t i c l e 20 EPC
1.      Responsibilities of the Legal Division
        OJ 1989, 177                                                                                            6
2.      Correspondence with the Legal Division
        OJ 1990, 404                                                                                            7

A r t i c l e 23(4) EPC
1.      Rules of procedure of the Enlarged Board of Appeal, Consolidated version
        OJ 2003, 58                                                                                             8
        Version consolidating the amendments published in OJ EPO 1989, 362; OJ EPO 1994, 443, and in OJ EPO
        2003, 58                                                                                                9
2.      Rules of procedure of the Boards of Appeal, Decision of Administrative Council
        OJ 2003, 61                                                                                             12
3.      Rules of procedure of the Boards of Appeal, Consolidated version
        OJ 2004, 541                                                                                            13
        Version consolidating the amendments published in OJ EPO 1983, 7; OJ EPO 1989, 361; OJ EPO 2000, 316,
        OJ EPO 2003, 61, OJ EPO 2003, 89 and OJ EPO 2004, 541                                                   13
4.      Transfer of functions to the Registrars of the Boards of Appeal
        OJ 1985, 249 as amended OJ 2002, 590                                                                    18
5.      Guidance for parties to appeal proceedings and their representatives
        OJ 2003, 419                                                                                            19

A r t i c l e 33 EPC
1.      Authenticity of decisions in the three languages of the EPO
        OJ 1978, 201                                                                                            26
2.      Notice concerning amendments to Rules 28 EPC and Rule 28a EPC
        OJ 1996, 596                                                                                            26

A r t i c l e 39 EPC
Proportion of renewal fees remitted to the EPO
        OJ 1984, 296                                                                                            29

A r t i c l e 55(1)(b) EPC
International Exhibitions
        OJ 1979, 159                                                                                            30
        OJ 1981, 221                                                                                            30
        OJ 1983, 37                                                                                             31
        OJ 1984, 51                                                                                             31
        OJ 1985, 32                                                                                             31



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      OJ 1986, 43                                                                  32
      OJ 1987, 86                                                                  32
      OJ 1988, 159                                                                 32
      OJ 1989, 156                                                                 32
      OJ 1990, 183                                                                 33
      OJ 1991, 240                                                                 33
      OJ 1992, 202                                                                 34
      OJ 1993, 266                                                                 34
      OJ 1994, 276                                                                 34
      OJ 1995, 270                                                                 34
      OJ 1996, 246                                                                 34
      OJ 1997, 190                                                                 35
      OJ 1998, 230                                                                 35
      OJ 1999, 242                                                                 35
      OJ 2000, 224                                                                 35
      OJ 2001, 227                                                                 36
      OJ 2002, 228                                                                 36
      OJ 2003, 161                                                                 36
      OJ 2004, 223                                                                 36
      OJ 2005, 295                                                                 36
      OJ 2006, 326                                                                 36

A r t i c l e 65 EPC
Agreement on the application of Article 65 EPC
        OJ 2001, 549                                                               38

A r t i c l e 75 EPC
1.      Termination of the Administrative Agreement between the DPMA and the EPO
        OJ 2005, 444                                                               41
        OJ 2005, 248                                                               41
2.      Vienna sub-office not a filing office
        OJ 1992, 183                                                               42
3.      Accelerated prosecution of European patent applications - ‘PACE’
        OJ 2001, 459                                                               43
4.      New patent application numbering system (see R. 24(2) EPC)
        OJ 2001, 465                                                               44

A r t i c l e 79 EPC
1.      Extension of European patents
1.1 Extension of European patents to Slovenia
        OJ 1994, 75                                                                45
        OJ 1999, 183                                                               50
1.2 Extension of European patents to Latvia and Lithuania
        OJ 1994, 201                                                               50
        OJ 1994, 527                                                               51
        OJ 1995, 345                                                               52
1.3 Extension of European patents to Albania
        OJ 1995, 803                                                               52
        OJ 1996, 82                                                                53
1.4 Extension of European patents to Macedonia
        OJ 1997, 345                                                               54
        OJ 1997, 538                                                               54
1.5 Extension of European patents to Croatia
        OJ 2004, 117                                                               56
1.6 Extension of European patents to Serbia and Montenegro
        OJ 2004, 563                                                               57
1.7 Extension of European patents to Bosnia and Herzegovina
        OJ 2004, 619                                                               57
2.      More time to pay designation fees
        OJ 1997, 79                                                                58
3.      New patent law in Hong Kong
        OJ 1997, 429                                                               58




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4.    Registration of European patents (UK) in overseas states or territories
      OJ 2004, 179                                                                                                      60

A r t i c l e 87(1) EPC
Priority conferring effect of the US ‘provisional application for patent’
        OJ 1996, 81                                                                                                     62

A r t i c l e 93 EPC
1.      Changes in EPO publications
        OJ 1997, 479                                                                                                    63
2.      Publication of ‘extension states’ on A and B document
        OJ 1997, 115                                                                                                    64
3.      Paragraph numbering in European patent documents
        OJ 1998, 598                                                                                                    64
4.      Advance ordering of additional patent specifications
        OJ 1987, 242                                                                                                    65
5.      New publication system for corrections to A and B documents
        OJ 2001, 117                                                                                                    66

A r t i c l e 97(6) EPC
Acceleration of the proceedings
        OJ 1995, 841                                                                                                    69

A r t i c l e 98 EPC
New publication system for corrections to A and B documents
        OJ 2001, 117                                                                                                    70

A r t i c l e 99 EPC
1.      Note on opposition procedure in the EPO
        OJ 2001, 148                                                                                                    71
2.      Accelerated processing of oppositions
        OJ 1998, 361                                                                                                    74

A r t i c l e 106 EPC
Accelerated processing before the boards of appeal
        OJ 1998, 362                                                                                                    76

A r t i c l e 116 EPC
1.      Sound recording devices in oral proceedings
        OJ 1986, 63                                                                                                     77
2.      Oral proceedings before the EPO
        OJ 2000, 456                                                                                                    77
3.      Interpretation in oral proceedings
        OJ 1994, 583                                                                                                    78
4.      Communication concerning the obligation to give notice before boards of appeal
        OJ 1995, 489                                                                                                    79
5.      Interviews and oral proceedings to be held as a video conference
        OJ 2006, 585                                                                                                    79

A r t i c l e 127 EPC
1.      Inspection of files and online consultation of the European Patent Register
        OJ 2006, 535                                                                                                    81
2.      New tool for use with the European Patent Register online
        OJ 2003, 23                                                                                                     82
3.      Use of the Online European Patent Register
        OJ 2003, 69                                                                                                     83
4.      Free subscription to the online services
        OJ 1995, 235                                                                                                    84
5.      Register of European Patents on-line; further user possibilities
        OJ 1997, 576                                                                                                    85
6.      Register Plus, the new way of accessing the Online European Patent Register and Online Public File Inspection
        OJ 2005, 326                                                                                                    86



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7.    Online Fee Payment service
      OJ 2006, 204                                                                               86
8.    EPO Online Multiplay Tool
      OJ 2006, 446                                                                               88

A r t i c l e 129 EPC
1.      Changes in the European Patent Bulletin
        OJ 1983, 459                                                                             89
        OJ 1986, 63                                                                              89
        OJ 1988, 37                                                                              91
2.      Two-letter country codes
        OJ 1994, 412                                                                             92

A r t i c l e 134(2) EPC
Use of titles by Professional Representatives before the EPO
        OJ 1979, 452                                                                             95

A r t i c l e 134(8) EPC
1.      General regulations for professional representatives
1.1 Establishment of an Institute of Professional Representatives consolidated version
        OJ 1997, 350 with Corrections according to OJ 1997, 130, OJ 2002, 429 and OJ 2004, 361    96
1.2 Code of Professional Conduct - epi
        OJ 2003, 523                                                                              99
        OJ 2005, Suppl. to No. 1/2005, page 1                                                    102
        OJ 2005, Suppl. to No. 1/2005, page 49                                                   102
2.      Regulations on discipline
2.1 Decision amending the Arrangements for deposit accounts
        OJ 1978, 91                                                                              102
2.2 Regulation on discipline for professional representatives
        OJ 1980, 176                                                                             108
2.3 Additional rules of procedure of the Disciplinary Board of the EPO
        OJ 1980, 177                                                                             109
2.4 Additional rules of procedure of the Disciplinary Board of the EPO
        OJ 1980, 183                                                                             113
2.5 Additional rules of procedure of the Disciplinary Board of Appeal of the EPO
        OJ 1980, 188                                                                             117
2.6 Notice concerning decisions taken by the Disciplinary Board of Appeal
        OJ 1998, 211                                                                             120
3.      European qualifying examination
3.1 Regulation on the European qualifying examination for professional representatives
        OJ 2006, Supplement to OJ 12/2006, page 1                                                121
3.2.1 Implementing provisions to the Regulation on the European qualifying examination
        OJ 2006, Supplement to OJ 12/2006, page 14                                               127
3.2.2 Qualifications required for enrolment for the European qualifying examination
        OJ 2006, Supplement to OJ 12/2006, page 17                                               129
3.2.3 Decision of the Examination Board regarding the distribution of marks
        OJ 2005, 393                                                                             131
3.3 Instructions to candidates concerning the conduct of the examination
        OJ 2006, Supplement to OJ 12/2006, page 21                                               131
3.4 Instructions to candidates for preparing their answers
        OJ 2006, Supplement to OJ 12/2006, page 25                                               133
3.5 Instructions to invigilators
        OJ 2006, Supplement to OJ 12/2006, page 31                                               136
3.6 European qualifying examination 2008
        OJ 2006, 475                                                                             138

A r t i c l e 142 EPC
Designation of Contracting States for the ‘subsequent choice of a Community Patent’
        OJ 1991, 623                                                                             139




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A r t i c l e 149 EPC
Treaty between Switzerland and Liechtenstein on Patent Protection
        OJ 1980, 407                                                                                     140

A r t i c l e 150 EPC
1.      Amendment of PCT Regulations
        OJ 1997, 592                                                                                     145
2.      Amendment of PCT Regulations
        OJ 1998, 332                                                                                     146
3.      The International Bureau of WIPO
        OJ 1993, 764                                                                                     148
4.      Access to PCT files
        OJ 1999, 329                                                                                     150
5.      Access to PCT files
        OJ 2003, 382                                                                                     150
6.      Amended Agreement between EPO and WIPO
        OJ 2001, 601                                                                                     151
7.      Changes in respect of PCT applications
        OJ 2003, 574                                                                                     155
8.      EPO discontinues its rationalised international preliminary examination procedure
        OJ 2004, 305                                                                                     156
9.      Refund of search fees
        OJ 2003, 631                                                                                     157
10. Revised amounts of the refund of search fees
        OJ 2005, 463                                                                                     159
11. Revised amounts of the refund of search fees (France)
        OJ 2006, 111                                                                                     160
12. Revised amounts of the refund of search fees (adjustment of fees and prices)
        OJ 2006, 252                                                                                     162
13. Limitation of the EPO's competence as a PCT authority
        OJ 2002, 52                                                                                      164
14. Limitation of the EPO's competence as a PCT authority
        OJ 2006, 555                                                                                     166
15. Partial lifting of the limitation on the EPO's competence as a PCT authority
        OJ 2003, 633                                                                                     166
16. Limitation of the EPO's competence as a PCT authority
        OJ 2006, 149                                                                                     167
17. Limitation of the EPO's competence as a PCT authority
        OJ 2002, 175                                                                                     168
18. Carrying out of international-type searches
        OJ 1999, 300                                                                                     169
19. Business methods
        OJ 2002, 260                                                                                     169

A r t i c l e 150(2) EPO
Language of correspondence under the PCT
        OJ 1993, 540                                                                                     171

A r t i c l e 151 EPC
1.      Time for payment of the fees for international applications
        OJ 1978, 271                                                                                     172
2.1 Late payment fee under Rule 16bis.2 PCT
        OJ 1992, 383                                                                                     173
2.2 Late payment fee under Rule 58bis.2 PCT
        OJ 1998, 282                                                                                     173
3.      Filing of authorisations with the EPO as receiving Office
        OJ 1994, 538                                                                                     174

A r t i c l e 153 EPC
1.      Guide for applicants - part 2: PCT procedure before the EPO - ‘euro-PCT’
        OJ 1999, 747                                                                                     175




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2.     EPO Form 1200 for entry into the European phase
       OJ 2006, 447                                                                                                175

A r t i c l e 154 EPC
1.      Protest procedure under the PCT
        OJ 2005, 226                                                                                               177
2.      Agreements
2.1 Agreement with Netherland on international-type searches
        OJ 1979, 463                                                                                               178
2.2 Implementation of PCT Rule 48.3(b) - Agreements with the Belgian Patent Office
        OJ 1981, 531                                                                                               180
3.      Specification of the EPO as International Searching Authority by
3.1 EPO as International Searching Authority by the US Patent and Trademark Office
        OJ 1982, 323                                                                                               180
        OJ 1987, 266                                                                                               181
        OJ 1990, 443                                                                                               182
3.2 EPO as International Searching Authority by the Japanese Patent Office
        OJ 1985, 331                                                                                               182
        OJ 1990, 443                                                                                               183
3.3 EPO as International Searching Authority by the Polish Patent Office
        OJ 1991, 124                                                                                               183
3.4 Fee reduction in favour of nationals of certain states
        OJ 2000, 446                                                                                               184

A r t i c l e 155 EPC
1.      Date on which the preliminary examination fee is payable to the EPO
        OJ 1979, 427                                                                                               185
2.      PCT request form and the demand form for international preliminary examination
        OJ 1993, 103                                                                                               185
3.      Guide for applicants - part 2: PCT procedure before the EPO - ‘euro-PCT’
        OJ 1999, 747                                                                                               186
3.1 Rationalisation of international preliminary examination procedure at the EPO
        OJ 2001, 539                                                                                               186
3.2 Spain to be bound by Chapter II of the PCT
        OJ 1997, 394                                                                                               188
3.3 Spanish Patent and Trademark Office as an International Preliminary Examining Authority
        OJ 2003, 383                                                                                               188
4.1 Withdrawal by the USA of the reservation concerning Chapter II PCT
        OJ 1987, 266                                                                                               189
4.2 EPO as IPEA by the US Patent and Trademark Office
        OJ 1990, 443                                                                                               190
4.3 EPO as International Preliminary Examining Authority by the Japanese Patent Office
        OJ 1985, 331                                                                                               190
4.4 EPO as International Preliminary Examining Authority by the Japanese Patent Office
        OJ 1990, 443                                                                                               191
4.5 EPO as International Preliminary Examining Authority by the Polish Patent Office
        OJ 1991, 124                                                                                               191

A r t i c l e 156 EPC
1.      Guide for applicants - part 2: PCT
        OJ 1999, 747                                                                                               192
2.      EPO form 1200 for entry of regional phase before EPO as designated or elected Office’
        OJ 2003, 587                                                                                               192

A r t i c l e 157(3) EPC
1.      Reducing the fee for the supplementary European search where the international search report was drawn up
        by the Austrian Patent Office, by the National Board of Patents and Registration of Finland, by the Spanish
        Patent and Trademark Office or by the Swedish Patent and Registration Office
        OJ 2005, 422, OJ 2005, 546                                                                                  193
        OJ 2006, 13                                                                                                 194
2.      Notice concerning search and examination fees
        OJ 2006, 192                                                                                                195




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3.    Search fee for the supplementary European search is to be reduced
      OJ 2005, 548                                                                                                 198
4.    Search and examination fees
      OJ 2005, 577                                                                                                 199
5.    Introduction of the extended European search report
      OJ 2005, 435                                                                                                 204
6.    Fee reduction by designated/elected Offices where the EPO has acted as ISA or IPEA
      OJ 1994, 691                                                                                                 204

A r t i c l e 158(2) EPC
EPO as Designated Office waives the requirement to furnish a copy of the international application, even if not
transmitted by the International Bureau - Art. 22(1), Rule 49.1(a bis) PCT
        PCT Gazette 14/1986, 2367                                                                                  206

A r t i c l e 163 EPC
Expiry of the transitional period provided for in Article 163, paragraph 1
        OJ 1978, 327                                                                                               207

A r t i c l e 167 EPC
1.      Expiry of the reservations by Austria
        OJ 1987, 426                                                                                               208
2.      Expiry of the reservations by Spain and Greece
        OJ 1992, 301                                                                                               209

II. DECISIONS BASED ON RULES OF THE IMPLEMENTING REGULATIONS OF THE EPC

R u l e 1(2) EPC
Language of correspondence under the PCT
       OJ 1993, 540                                                                                                213

R u l e 2(1) EPC
Communication concerning the obligation to give notice in proceedings
       OJ 1995, 489                                                                                                214

R u l e 9(2) EPC
1.     Responsibilities of the Legal Division
       OJ 1989, 177                                                                                                215
2.     Correspondence with the Legal Division
       OJ 1990, 404                                                                                                215

R u l e 9(3) EPC
Entrustment to non-examining staff of certain duties
       OJ 1999, 504                                                                                                216

R u l e 10(2) EPC
Transfer of functions to the Registrars of the Boards of Appeal
       OJ 1985, 249 as amended OJ 2002, 590                                                                        220

R u l e 17(3) EPC
Renouncing the Notification to the inventor
       OJ 1991, 266                                                                                                221

R u l e 24(1) EPC
1.     Notice concerning the cancellation of telex numbers
       OJ 2004, 374                                                                                                222
2.     Correspondence with the Office via e-mail
       OJ 1999, 509                                                                                                222
3.     Notice concerning correspondence with the Office via e-mail
       OJ 2000, 458                                                                                                223
4.     Introduction of a central e-mail address for the whole Office
       OJ 2006, 610                                                                                                223




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5.    Decision on the electronic filing of patent applications
      OJ 2002, 543                                                                                   224
6.    Decision on the electronic filing of patent applications
      OJ 2002, 545                                                                                   225
7.    Electronic filing of patent applications with the German Patent and Trade Mark Office (DPMA)
      OJ 2004, 270                                                                                   227
8.    Electronic filing of documents within the meaning of Rule 36 EPC
      OJ 2003, 609                                                                                   228
9.    European application in XML format using PatXML
      OJ 2003, 610                                                                                   229
10.   Mail addressed to the EPO
      OJ 2005, 363                                                                                   230
11.   Notice concerning the filing of patent applications by facsimile
      OJ 1995, 490                                                                                   231
12.   Decision on the use of facsimile for filing patent applications
      OJ 2005, 41                                                                                    232
13.   Processing of documents filed by fax with the EPO at The Hague
      OJ 2006, 373                                                                                   233
14.   Notice concerning the filing of patent applications and other documents
      OJ 2005, 44                                                                                    233
15.   Notice concerning the discontinuation of EP-EASY project
      OJ 2002, 515                                                                                   236
16.   Beta-test of the PCT-EASY software for the filing of international applications
      OJ 1998, 143                                                                                   237
17.   EASY for international applications
      OJ 1999, 165                                                                                   238

R u l e 24(2) EPC
New patent application numbering system
       OJ 2001, 465                                                                                  239

R u l e 24(4) EPC
Notice concerning EPO confirmation of receipt
       OJ 1990, 306                                                                                  242

R u l e 26(2)(b) EPC
Notice concerning the amendment of the title of the invention
       OJ 1991, 224                                                                                  243

R u l e 27a EPC
1.     Presentation of nucleotide and amino acid sequences
       OJ 1998, Suppl. No. 2 to OJ 11/1998, p. 59                                                    244
2.     Late furnishing fee under Rule 13ter PCT
       OJ 2005, 225                                                                                  244
3.     Notice concerning the computer program PatentIn
       OJ 1992, 312                                                                                  245

R u l e 28 EPC
1.     Declaration by the EPO specified in Article 9 of the Budapest Treaty
       OJ 1980, 380                                                                                  246
2.     Recognition of microbiological experts for the purpose of Rule 28 EPC
       OJ 1981, 359                                                                                  246
3.     European patent applications and patents - micro-organisms
       OJ 1986, 269                                                                                  249
4.     Micro-organisms – Budapest Treaty
       OJ 1991, 461                                                                                  253
5.     Notice concerning amendments to Rule 28 EPC and Rule 28a EPC
       OJ 1996, 596                                                                                  254

R u l e 28(4) EPC
Procedure for informing the EPO that the ‘expert’ option has been chosen
       OJ 1981, 358                                                                                  255



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R u l e 28a EPC
Notice concerning amendments to Rule 28 EPC and Rule 28a EPC
       OJ 1996, 596                                                                                                   256

R u l e 32 EPC
Filing of drawings
       OJ 1994, 74                                                                                                    257

R u l e 35 EPC
OCR-readable patent applications
       OJ 1993, 59                                                                                                    258

R u l e 35(2) EPC
Number of copies to be filed of the documents making up the European patent applications
       OJ 2001, 563                                                                                                   260

R u l e 36(5) EPC
1.     Notice concerning the filing of patent applications by facsimile
       OJ 1995, 490                                                                                                   261
2.     Beta-test of the PCT-EASY software for the filing of international applications
       OJ 1998, 143                                                                                                   261

R u l e 37(1) EPC
Instructions for paying renewal fees
       OJ 1980, 101 and OJ 1984, 272                                                                                  262

R u l e 38(3) and (4) EPC
1.     Application of Rule 38 (3)(4) EPC to European divisional applications
       OJ 1979, 290                                                                                                   264
2.     Decision on the filing of priority documents
       OJ 1999, 80                                                                                                    264
3.     Electronic filing of priority documents issued by the United States Patent and Trademark Office
       OJ 2004, 562                                                                                                   265
4.     Decision on the inclusion of priority documents in the files
       OJ 2000, 227                                                                                                   266

R u l e 38(5) EPC
Requirement to file a translation of the previous application
       OJ 2002, 192                                                                                                   267

R u l e 44 EPC
1.     Annex to the European search report
       OJ 1982, 448                                                                                                   268
2.     Publication of the annex to the European search report
       OJ 1999, 90                                                                                                    270
3.     Pilot project concerning an Extended European Search Report
       OJ 2004, 375                                                                                                   270

R u l e 44a EPC
Introduction of the extended European search report
       OJ 2005, 435                                                                                                   271

R u l e 48 EPC
1.     Publication of European patent applications whose deemed withdrawal has not yet become definitive
       OJ 1990, 455                                                                                                   274
2.     Completion of the technical preparations for publication
       OJ 2006, 405                                                                                                   275
3.     Withdrawal of the application to prevent publication
       OJ 2006, 406                                                                                                   275
4.     Completion of technical preparations for publication
       OJ 2006, 409                                                                                                   276




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R u l e 49 EPC
1.     Cover page of the patent specification
       OJ 1981, 74                                                                                                  278
2.     Decision concerning the publication of European patent applications in electronic form
       OJ 2000, 367                                                                                                 278
3.     Notice concerning the publication of European patent applications
       OJ 2000, 368                                                                                                 279
4.     Notice concerning the form of European patent specifications
       OJ 1984, 88                                                                                                  279
5.     Decision on the summary listing of references cited by the applicant
       OJ 2006, 428                                                                                                 280
6.     Decision concerning the form of publication of European patent applications, search reports and patent
       specifications
       OJ 2005, 124                                                                                                 280
7.     Notice concerning the introduction of electronic publication of European patent applications (A-documents)
       and (B-documents)
       OJ 2005, 126                                                                                                 281

R u l e 51 EPC
Amendment of Rule 25(1), Rule 29(2) and Rule 51 EPC
       OJ 2002, 112                                                                                                 283

R u l e 51(4) EPC
Notice concerning the amendment of Rule 51(4) EPC
       OJ 2005, 129                                                                                                 285

R u l e 54 EPC
Decision concerning the content and form of the certificate for a European patent
       OJ 2005, 122                                                                                                 286

R u l e 58 EPC
Application of Rule 58(4) in opposition proceedings
       OJ 1989, 393                                                                                                 287

R u l e 71 EPC
Acknowledgement of receipt for summonses to oral proceedings
       OJ 1991, 577                                                                                                 288

R u l e 74(4) EPC
Compensation and fees payable to witnesses and experts
       OJ 1983, 100                                                                                                 289

R u l e 77(1) EPC
EPO Seals
       OJ 2003, 612                                                                                                 291

R u l e 78 EPC
Use of an address for correspondence by applicants without representative
       OJ 1980, 397                                                                                                 293

R u l e 80 EPC
Public notification
       OJ 1980, 36                                                                                                  294

R u l e 84 EPC
1.     Length of time-limits to be fixed under Article 96(2)
       OJ 1979, 289                                                                                                 295
2.     Length of time-limits to be fixed under Article 96(2)
       OJ 1980, 68                                                                                                  295
3.     Extensions of time periods in Examination and Opposition Proceedings
       OJ 1989, 180                                                                                                 296




xii
                                                                                              Table of Contents



R u l e 84a EPC
Application of Rule 84a EPC on the late receipt of documents
       OJ 2003, 283                                                                                        297

R u l e 85(1) EPC
1.     Extension of time-limits on days where the EPO filing office is not open - List 1999
       OJ 1998, 554                                                                                        298
2.     Closing of the European Patent Office on 3rd and 4th January 2000
       OJ 1999, 572                                                                                        298
3.     Extension of time-limits on days where the EPO filing office is not open - List 2000
       OJ 1999, 695                                                                                        299
4.     Extension of time-limits on days where the EPO filing office is not open - List 2001
       OJ 2000, 506                                                                                        300
5.     Extension of time-limits on days where the EPO filing office is not open - List 2002
       OJ 2001, 523                                                                                        300
6.     Extension of time-limits on days where the EPO filing office is not open - List 2003
       OJ 2002, 549                                                                                        301
7.     Extension of time-limits on days where the EPO filing office is not open
       OJ 2003, 507                                                                                        302
8.     Extension of time-limits on days where the EPO filing office is not open - List 2004
       OJ 2003, 566                                                                                        302
9.     Extension of time-limits on days where the EPO filing office is not open - List 2005
       OJ 2004, 449                                                                                        303
10. Extension of time-limits on days where the EPO filing office is not open - List 2006
       OJ 2005, 477                                                                                        303
11. Extension of time-limits on days where the EPO filing office is not open - List 2007
       OJ 2006, 445                                                                                        304

R u l e 85(2) EPC
1.     General interruptions in the delivery of mail (DE)
       OJ 1990, 304                                                                                        305
2.     General interruptions in the delivery of mail (GR)
       OJ 1991, 57                                                                                         305
3.     General interruptions in the delivery of mail (UK)
       OJ 1991, 266                                                                                        306
4.     General interruptions in the delivery of mail (DE)
       OJ 1992, 306                                                                                        306
5.     General interruptions in the delivery of mail (UK)
       OJ 1993, 459                                                                                        307
6.     General interruptions in the delivery of mail (UK)
       OJ 1993, 636                                                                                        307
7.     General interruptions in the delivery of mail (DE)
       OJ 1994, 583                                                                                        308
8.     General interruptions in the delivery of mail (PT)
       OJ 1994, 952                                                                                        308
9.     General interruptions in the delivery of mail (FR)
       OJ 1996, 81                                                                                         309
10. General interruptions in the delivery of mail (FR)
       OJ 1996, 150                                                                                        309
11. General interruptions in the delivery of mail (GB)
       OJ 1997, 32                                                                                         310
12. General interruptions in the delivery of mail (DE)
       OJ 1997, 214                                                                                        310
13. General interruptions in the delivery of mail (DE)
       OJ 1998, 256                                                                                        311
14. General interruptions in the delivery of mail (US)
       OJ 2001, 563                                                                                        311
15. General interruptions in the delivery of mail (UK)
       OJ 2003, 581                                                                                        312
16. General interruptions in the delivery of mail (IE)
       OJ 2004, 323                                                                                        312




                                                                                                            xiii
Table of Contents



R u l e 85(3) EPC
Holidays observed by EPO filing offices and the national patent authorities in 2007
       OJ 2007, 42                                                                                                  313

R u l e 85(5) EPC
1.     Dislocation in the delivery of mail on account of civil disorder etc.
       OJ 2005, 476                                                                                                 314
2.     Dislocation in the delivery of mail on account of civil disorder etc.
       OJ 2005, 519                                                                                                 314

R u l e 92(2) EPC
Recording of certain information in the Register of European Patents
       OJ 1983, 458                                                                                                 315
       OJ 1986, 61                                                                                                  315
       OJ 1986, 327                                                                                                 316

R u l e 93(d) EPC
Parts of the file excluded from inspection
       OJ 2001, 458                                                                                                 317

R u l e 94 EPC
File inspection
       OJ 2003, 370                                                                                                 318

R u l e 95a(1) EPC
1.     Keeping of files relating to European patent applications and patents
       OJ 1990, 365                                                                                                 319
2.     Decision concerning phased implementation and use of PHOENIX electronic file system
       OJ 1998, 360                                                                                                 319

R u l e 101(1) EPC
1.     Filing of authorisations
       OJ 1991, 489                                                                                                 321
2.     Filing of authorisations with the EPO as receiving Office
       OJ 1994, 538                                                                                                 322

R u l e 101(3) EPC
General authorisations
       OJ 1985, 42                                                                                                  323
       OJ 1986, 327                                                                                                 323

R u l e 101(9) EPC
Authorisation of an association
       OJ 1979, 92                                                                                                  324

R u l e 104(1) EPC
Decision concerning the number of copies to be filed of the documents making up the international patent application
       OJ 2006, 439                                                                                                  326

R u l e 108 EPC
Notice concerning the changes to Rule 108 EPC
       OJ 2005, 130                                                                                                 327

R u l e 111(2) EPC
1.     Decision on the filing of priority documents
       OJ 1999, 80                                                                                                  328
2.     Decision on the inclusion of priority documents in the files
       OJ 2000, 227                                                                                                 328




xiv
                                                                                                Table of Contents



III. DECISIONS BASED ON THE RULES RELATING TO FEES

Rules Relating to Fees – General
Introduction of the euro
       OJ 2001, 524                                                                                          331
Guidance for the payment of fees, costs and prices
       OJ 2006, 490                                                                                          332
Rules relating to Fees
       OJ 2002, 58, OJ 2005, 5, OJ 2006, 8, OJ 2006, 255                                                     334
Transmission by diskette of particulars about the purpose of payments
       OJ 1996, 553                                                                                          341

A r t i c l e 5(2) RRF
1.      Revised version of the arrangements for deposit accounts and their annexes
        OJ 2005, Suppl. to OJ No. 1/2005, page 1                                                             342
        OJ 2005, Suppl. to OJ No. 1/2005, page 2                                                             342
3.      Arrangements for deposit accounts
        OJ 2005, Suppl. to OJ No. 1/2005, page 3                                                             343
3.1 Arrangement for the automatic debiting procedure
        OJ 2005, Suppl. to OJ No. 1/2005, page 9                                                             346
3.2 Information concerning the automatic debiting procedure
        OJ 2005, Suppl. to OJ No. 1/2005, page 18                                                            350
3.3 Arrangements for online fee payment via My.epoline
        OJ 2005, Suppl. to OJ No. 1/2005, page 37                                                            357
3.4 Arrangements for debiting deposit accounts by diskette
        OJ 2005, Suppl. to OJ No. 1/2005, page 42                                                            359
3.5 Particulars to be supplied in the batch debit order
        OJ 2005, Suppl. to OJ No. 1/2005, page 45                                                            360
3.6 Administrative Agreement between the EPO and the epi
        OJ 2005, Suppl. to OJ No. 1/2005, page 46                                                            361
3.7 Debiting of EPI annual subscriptions from deposit accounts held with the EPO
        OJ 2005, Suppl. to OJ No. 1/2005, page 49                                                            363
4.      Notice concerning changes to the debt recovery procedure
        OJ 1999, 357                                                                                         363
5.      Decision concerning the payment of fees and costs at the Information Office in Munich
        OJ 2002, 162                                                                                         364

A r t i c l e 10(2) RRF
1.      Criteria for refund of search fee
        OJ 2002, 56                                                                                          365
2.      Refund of search fees under Article 10(2)
        OJ 2006, 83                                                                                          366
3.      Refund of search fees under Article 10(2)
        OJ 2006, 189                                                                                         367
4.      Criteria for refund of search fees
        OJ 2005, 433                                                                                         368

A r t i c l e 10c RRF
Rules relating to Fees - deposit accounts
        OJ 2001, 521                                                                                         370

IV. OTHER NOTICES AND PUBLICATIONS
1.    Notice concerning forms and publications available from the EPO
      OJ 2006, 85                                                                                            373
2.    Changes to important EPO forms
      OJ 1998, 597                                                                                           375
      OJ 2000, 369                                                                                           375
2.1   Update of the Request for Grant form
      OJ 2005, 366                                                                                           376
2.2   Form 1140 for the furnishing of samples of deposited micro-organisms
      OJ 1995, 62                                                                                            377




                                                                                                              xv
Table of Contents



2.3   EPO Form 1200 for entry into the regional phase before EPO
      OJ 2006, 447                                                                                 378
2.4   Updated EPO Forms 1010, 1037 and 1038
      OJ 2006, 285                                                                                 378
3.    Introduction of ‘EPA/EPO/OEB Form’ software
      OJ 1996, 640                                                                                 379
4.    The European Patent Office Web site on the Internet
      OJ 1997, 575                                                                                 380
      OJ 1999, 133                                                                                 380
5.    Decisions of the EPO boards of appeal on the Internet
      OJ 1999, 312                                                                                 381
6.    My.epoline® portal
      OJ 2004, 61                                                                                  381
7.    International Patent treaties - Paris Convention for the Protection of Industrial Property
      OJ 2006, 308                                                                                 383
8.    Patent Cooperation Treaty
      OJ 2006, 312                                                                                 385
9.    Patent Law Treaty (PLT)
      OJ 2006, 315                                                                                 387
10.   Budapest Treaty on the International Recognition of the Deposit of Micro-organisms
      OJ 2006, 315                                                                                 388
11.   International Depositary Authorities under Article 7 of the Budapest Treaty
      OJ 2006, 317                                                                                 390
12.   Vienna Convention on the Law of Treaties
      OJ 2006, 320                                                                                 393
13.   Agreement establishing the World Trade Organization (WTO)
      OJ 2006, 320                                                                                 394
14.   Convention on the Grant of European Patents
      OJ 2006, 323                                                                                 396
15.   London Agreement
      OJ 2006, 327                                                                                 398

V. NATIONAL LAW IN CONTRACTING STATES
1.    Impact of the EPC on National Law
      OJ 1999, 145                                                                                 400

VI. LEGAL ADVICE FROM THE EPO
Cancellation of Legal advice notices
     OJ 1998, 359                                                                                  403

Legal advice 3/85 rev.
Claims fees - multiple sets of claims - Legal advice 3/85 rev.
      OJ 1985, 347                                                                                 404

Legal advice 4/80
Period of submitting a separate set of claims for Austria - Legal advice 4/80
      OJ 1980, 48                                                                                  406

Legal advice 5/93 rev.
Calculation of aggregate time limits - Legal advice 5/93
      OJ 1993, 229                                                                                 407

Legal advice 6/91 rev.
Payment of fees- Refunds of fees or other sums - Legal advice 6/91 rev.
      OJ 1991, 573                                                                                 411

Legal advice 8/80
Withdrawal of a European patent application - Legal advice 8/80
      OJ 1981, 6                                                                                   413




xvi
                                                                                                        Table of Contents



Legal advice 10/92
Euro-PCT application - Legal advice 10/92 rev.
      OJ 1992, 662                                                                                                   414

Legal advice 11/82
Revocation of the European patent during opposition proceedings - Legal advice 11/82
      OJ 1982, 57                                                                                                    419

Legal advice 13/82
Further processing of the European patent application - Legal advice 13/82
      OJ 1982, 196                                                                                                   420

Legal advice 15/05 rev.2
Auxiliary requests in examination and opposition proceedings - Legal advice 15/05 rev.2
       OJ 2005, 357                                                                                                  422

Legal advice 16/85
Request for a decision after the noting of loss of rights - Legal advice 16/85
      OJ 1985, 141                                                                                                   425

Legal advice 17/90
Authentic text of a granted patent when the specification contains misprints - Legal advice 17/90
      OJ 1990, 260                                                                                                   427

Legal advice 19/99
Filing of a translation of the previous application or a declaration under Rule 38(4) EPC - Legal advice 19/99
       OJ 1999, 296                                                                                                  428




                                                                                                                      xvii
xviii
Keyword Index




Keyword Index
Art.         -      Article of the EPC
R.           -      Rule of the EPC
RRF.         -      Rules Relating to Fees
Part         -      Part of the Collection

A
Accelerated processing
  of appeals Art. 106                                                                             76
  of oppositions where infringement, Art. 99                                                      74
Accelerated prosecution of European patent applications, Art. 75                                  43
Acceleration of the proceedings, Art. 97(6)                                                       69
Access to PCT files, Art. 150                                                                    150
Additional copies of the patent specification, Art. 93                                            65
Address for correspondence, R. 78                                                                293
Addresses, R. 24(1)                                                                              230
Administrative Agreement
  EPI/EPO, Art. 134(8)                                                                            96
Administrative Agreement between the DPMA and the EPO concerning receipt of documents, Art. 75    41
Administrative Agreement between the DPMA and the EPO, Termination, Art. 75                       41
Advance ordering of additional patent specifications, Art. 93                                     65
Agreement
  EPO/BE, Art. 154                                                                               180
  EPO/WIPO Art. 150                                                                              151
Albania, Art. 79                                                                                  52
Amendment of the EPC, Notices thereto, Art. 33                                                    26
Appeal Boards, Rules of procedure, Art. 23(4)                                                      8
Appeal proceedings, accelerated processing, Art. 106                                              76
Application numbering system, R. 24(2)                                                           239
Associations, authorisation of, R. 101(9)                                                        324
Austria, Expiry of the reservations, Art. 167                                                    208
Authenticity of AC texts in the three languages, Art. 33                                          26
Authorisations
  EPO as receiving Office, Art. 151                                                              174
  General, R. 101                                                                                321
  of associations, R. 101(9)                                                                     324
Automatic debiting procedure, Art. 5(2) RRF                                                      346

B
Batch debit order, particulars to be supplied, Art. 5(2) RRF                                     360
Belgian industrial and commercial property office, Art. 154                                      180
Berlin, Filing Office, Art. 10(2)                                                                  4
Boards of Appeal, Rules of procedure, Art. 23(4)                                                  13
Bosnia and Herzegovina, Art. 79                                                                   57
Budapest Treaty
  declaration by the EPO, R. 28                                                                  246
  deposit of micro-organisms, R. 28                                                              253
  Recognition of microbiological experts, R. 28                                                  246
Budapest Treaty, Part IV                                                                         388
Bulletin, European Patent, Art. 129                                                               89
Business methods - PCT search, Art. 150                                                          169



xix
C
Cancellation of Legal advice notices, Part VI                               403
Changes in EPO publications                                                  63
Code of Conduct, Art. 134(8)                                                 99
Community patent, choice of a, Art. 142                                     139
Compensation and fees payable to witnesses and experts, R. 74(4)            289
Computer program PatentIn, R. 27a                                           245
Confirmation of receipt, R. 24(4)                                           242
Consolidation of Euro-PCT applications, Art. 153                            175
Copies to be filed of the documents, R. 35(2)                               260
Copy of the international application, Art. 158(2)                          206
Correspondence
  applicant without a representative, R. 78                                 293
  with the Legal Division, Art. 20, R. 9(2)                                   7
Country codes, Art. 129                                                      92
Cover page of the patent specification, R. 49                               278
Croatia, Art. 79                                                             56

D
Database, Part IV                                                           381
Days on which EPO filing offices are closed, R. 85(1)                       302
Debiting of deposit accounts
  automatic debiting procedure, Art. 5(2) RRF                               363
  for EPl annual subscriptions, Art. 134(8)                                 102
Debt recovery procedure, Art. 5(2) RRF                                      363
Decisions of the EPO boards of appeal on the Internet, Part IV              381
Delivery of mail, interruptions, R. 85(2)                                   312
Deposit accounts, Art. 5(2) RRF                                             342
Deposits of micro-organisms, R. 28                                          253
Designated Office (EPO), no copy required, Art. 158(2)                      206
Designation fees, more time to pay, Art. 79                                  58
Designation of European patens in overseas states or territories, Art. 79    60
Disciplinary Board of Appeal of the EPO, Art. 134(8)                        117
Disciplinary Committee of the EPI Art. 134(8)                               103
Diskette, debiting deposit accounts, Art. 5(2) RRF                          359
Divisional applications, priority documents, R. 38(3)(4)                    264
Documents
  number of copies, R. 35(2)                                                260
Drawings, filing of, R. 32                                                  257
Duties entrusted to formalities officers, R. 9(3)                           216

E
EASY for international applications, R. 24(1)                               238
EASY software, R. 24(1), R. 36(5)                                           236
Electronic filing of patent applications, R. 24(1)                          224
Electronic publication, R. 49                                               281
E-mail address for the whole Office, R. 24(1)                               223
Enlarged Board of Appeal, Rules of procedure, Art. 23(4)                      8
Entry into the European phase, Art. 153                                     175
EPI (Institute of Professional Representatives) Art. 134(8)                  96
Epoline, R. 24(1)                                                           225



xx
Euro, introduction of the euro, RRF                                                                               331
Euro-PCT, Art. 153, 154, 155, 158(2)                                                                              175
European Patent Bulletin, Art. 129                                                                                 89
European Patent Convention, Part IV                                                                               396
European Qualifying Examination, Art. 134(8)                                                                      121
Exhibitions, international, Art. 55(1)(b)                                                                          30
Expert option, R. 28(4)                                                                                           255
Experts and witnesses, fees, R. 74(4)                                                                             289
Experts recognised, Budapest Treaty, R. 28                                                                        246
Expiry of the reservations, Art. 167                                                                              208
Extended European search report, Art. 10(2) RRF                                                                   368
Extended European search report, Art. 157(3)                                                                      204
Extended European search report, R. 44a                                                                           271
Extension of European patents to Slovenia, Art. 79                                                                 45

F
Facsimile, filing of patent applications, R. 24(1)                                                            231, 232
Fax number in The Hague, R. 24(1)                                                                                  233
Fee for the supplementary European search, Art. 157(3)                                                             193
Fees
   for international applications, Art. 151                                                                        172
   for the European qualifying examination Art. 134(8)                                                             124
   for witnesses or experts, R. 74(4)                                                                              289
File Inspection online, Art. 127                                                                                     86
File inspection, electronic, Art. 127                                                                                81
File inspection, parts excluded, R. 93(d)                                                                          317
Files, keeping of, R. 95a(1)                                                                                       319
Filing office
   Berlin, Art. 10(2)                                                                                                 4
   not in Vienna, Art. 75                                                                                            42
   Pschorrhöfe, Art. 10(2)                                                                                            4
Form of European patent specifications, R. 53                                                                      279
Form of publication of European patent applications, European search reports and European patent specifications, R. 49280
Form of the certificate for a European patent, R. 54                                                               286
Forms
   available from the EPO, Part IV                                                                                 373
   new ones, Part IV                                                                                               375
   software, Part IV                                                                                               379
   updated PCT form, Art. 155                                                                                      185
France, working agreement, Art. 150                                                                                160
Functions transferred to the Registrars of the Boards of Appeal, Art. 23(4), R. 10(2)                                18

G
General authorisations, R. 101(3)                                                                                 323
Guidance for parties to appeal proceedings and their representatives, Art. 23(4)                                   19
Guide for applicants - part 2: PCT procedure before the EPO, Art. 153                                             175

H
Headquarter, R. 24(1)                                                                                             230
Holidays
  EPO, R. 85(1)                                                                                              303, 304




                                                                                                                   xxi
    national offices, R. 85(3)                                                 313
Hong Kong, Art. 79                                                              58

I
Impact of the European Patent Convention on national law, Part V               400
Implementation of PCT Rule 48.3(b), Art. 154                                   180
Implementing the amendments Art. 33                                             28
Information on procedural steps (PCT), Art. 153, Art. 156                      175
Infringement actions, accelerate the processing, Art. 99                        75
INPADOC, Art. 7                                                                  3
Inspection of files, parts excluded, R. 93(d)                                  317
Institute of professional representatives, Art. 134(8)                          96
Instructions for qualifying examination, Art. 134(8)                           131
Integration of INPADOC, Art. 7                                                   3
International
   application, copy not required, Art. 158(2)                                 206
   applications, payments of fees, Art. 151                                    172
   Preliminary Examination Report (PCT), Art. 150, Art. 155                    150
   Searching Authority (PCT), Art. 150, Art. 154                               151
International Depositary Authorities, Part IV                                  390
International patent treaties, Part IV                                         383
International search report
   by EPO, Art. 157(3)                                                         204
   by national offices, Art. 157(3)                                            204
Internet address, Part IV                                                      380
Interpretation in oral proceedings, Art. 116                                    78
Interruption or dislocation in the delivery of mail, R. 85(2)                  312
Inventor, renouncement of notification, R. 17(3)                               221
Invigilators, instructions to re European qualifying examination Art. 134(8)   136
IPEA, Art. 150, Art. 154, Art. 157                                             149
ISA, Art. 150, Art. 154, Art. 157                                              149

J
Japanese Patent Office, Art. 154, Art. 155, Art. 157(3)                        182

K
Keeping of files, R. 95a(1)                                                    319

L
Lack of unity, Art. 154                                                        177
Landmark decisions of the Boards of Appeal Art. 134(8)                         123
Languages
  authenticity of AC texts, Art. 33                                             26
  of correspondence under the PCT, Art. 150(2)                                 171
Late payment fee, Art. 150(2)                                                  173
Late receipt of documents, R. 84a                                              297
Latvia and Lithuania, Art. 79                                                   50
Legal Advice, Part VI                                                          411
Liechtenstein, Art. 149                                                        140
Limitation of the EPO's competence as a PCT authority, Art. 150                167
London Agreement, Part IV                                                      398




xxii
M
Macedonia, Art. 79                                                                                         54
Mail
  interruption in the delivery, R. 85(2)                                                                  310
Marking of papers of the qualifying examination, Art. 134(8)                                              125
Microbiological experts, R. 28                                                                            246
Micro-organisms
  applications, R. 28                                                                                     250
  deposit, R. 28                                                                                          253
My.epoline® portal, Part IV                                                                               381

N
Notification to the inventor, renouncement, R. 17(3)                                                      221
Notification, public, R. 80                                                                               294
Nucleotide and amino acid sequences, R. 27a                                                               244
Number of copies to be filed of the documents making up the international patent application, R. 104(1)   326
Numbering system for patent applications, R. 24(2)                                                        239

O
Obligation to give notice in proceedings, R. 2(1)                                                         214
OCR-readable patent applications, R. 35                                                                   258
Official Journal, Part IV                                                                                 380
Online Fee Payment service, Art. 127                                                                       86
Online fee payment via My.epoline, Art. 5(2) RRF                                                          357
Online Multipay Tool, Art. 127                                                                             88
Opposition
  accelerated processing, Art. 99                                                                          74
Opposition procedure, Art. 99                                                                              71
Oral proceeding, language of the proceeding, Art. 116                                                      79
Oral proceedings
  receipt form for summonses, R. 71                                                                       288
  sound recording, Art. 116                                                                                77
  use of an alternative official language, R. 2(1)                                                        214
Ordering additional copies of the patent specification Art. 93                                             66
Overseas states Art. 79                                                                                    60

P
PACE, accelerated processing of European patent applications, Art. 75                                      43
Paragraph numbering in European patent documents, Art. 93                                                  64
Paris Convention for the Protection of Industrial Property, Part IV                                       383
Patent Cooperation Treaty, Part IV                                                                        385
Patent family members, R. 44                                                                              268
Patent Law Treaty (PLT), Part IV                                                                          387
Patent Register, European, online access, Art. 127                                                         81
Patent Treaty CH/LI, Art. 149                                                                             140
PatentIn computer program, R. 27a                                                                         245
PatXML, R. 24(1)                                                                                          229
Payment
  fee for the international application, Art. 151                                                         172
  of fees and costs at the Information Office in Munich, Art. 5(2) RRF                                    364
  of renewal fees, R. 37(1)                                                                               262



                                                                                                          xxiii
  with Credit cards, Art. 5(2) RRF                                         364
PCT
  Access to PCT files, Art. 150                                            150
  Authorisation, Art. 151                                                  174
  General, Art. 150ff                                                      145
  language of correspondence, Art. 150(2)                                  171
PCT Regulations, Art. 150                                                  146
PHOENIX electronic file system, R. 95a(1)                                  320
Polish Patent Office Art. 154, Art. 155                                    184
Postal addresses, R. 24(1)                                                 230
Postcode, R. 24(1)                                                         230
Power of Attorney, see authorisations, R. 101                              321
Preliminary examination fee, Art. 155                                      185
Preliminary Examining Authority under the PCT, Art. 150                    166
Priority conferring effect of the US provisional application, Art. 87(1)    62
Priority documents
  for divisional applications, R. 38(3)(4)                                 264
  for previous European applications, R. 38(3)(4)                          264
Procedure
  choice of expert option, R. 28(4)                                        255
Proceedings
  acceleration of Art. 97(6)                                                69
  obligation to give notice, R. 2(1)                                       214
Professional representatives
  authorisations, R. 101(1)                                                321
  discipline for, Art. 134(8)                                              102
  Institute of, Art. 134(8)                                                 99
Proportion of renewal fees remitted to the EPO, Art. 39                     29
Prosecution of European patent applications, accelerated, Art. 75           43
Protest procedure under the PCT, Art. 154                                  177
Pschorrhöfe, Munich, Art. 10(2)                                              4
Public holidays
  EPO, R. 85(1)                                                            300
Public notification, R. 80                                                 294
Publication
  applications containing a sequence listing, R. 49                        279
  in electronic form only, R. 49                                           279
  of official notices on the Internet, Part IV                             380
  technical preparations, R. 48                                            275
  withdrawal has not yet become definitive, R. 48                          274
  withdrawal to prevent, R. 48                                             275
Publication server, R. 49                                                  281
Publication system for corrections to A and B documents, Art. 93            66
Purpose of payments, transmission by diskette, RRF                         341

Q
Qualifying examination, regulation, Art. 134(8)                            121

R
Rationalised international preliminary examination procedure, Art. 150     156
Receipt, confirmation of, R. 24(4)                                         242




xxiv
Recognition of microbiological experts, R. 28                                                                       246
Recording of certain information in the Register, R. 92(2)                                                          315
Reducing the fee for the supplementary European search where the international search report was drawn up by the
  Austrian Patent Office, by the National Board of Patents and Registration of Finland, by the Spanish Patent and
  Trademark Office or by the Swedish Patent and Registration Office, Art. 157(3)                                    194
Refund
  of search fees, Art. 10(2) RRF                                                                                    365
Refund of search fees, Art. 10(2) RRF                                                                               367
Refund of search fees, revised amounts, Art. 150                                                                    159
Register of European Patents
  subscriptions online, Art. 127                                                                                     82
Registrars of the Boards of Appeal, functions entrusted to, Art. 23(4), R. 10(2)                                     18
Regulation on the European Qualifying Examination, Art. 134(8)                                                      121
Renewal fees
  instructions for paying, R. 37(1)                                                                                 262
Request for Grant form (Form 1001), Part IV                                                                         376
Request for the furnishing, Part IV                                                                                 377
Reservations by
  Austria, Art. 167                                                                                                 208
  Greece and Spain, Art. 167                                                                                        209
Responsibilities of the Legal Division, Art. 20, R. 9(2)                                                              6
RFees 2006 - fee adjustment                                                                                         195
Rules of Procedure
  Boards of Appeal, Art. 23(4)                                                                                       12
  Disciplinary Bodies, Art. 134(8)                                                                                   99
  Enlarged Board of Appeal, Art. 23(4)                                                                                8
Rules relating to Fees, RRF                                                                                         334

S
Search fee
  reduction, Art. 155                                                                                               184
Search report, Annex, R. 44                                                                                         268
Searches international type, Art. 150(1)                                                                            169
Searching Authority under the PCT, Art. 150                                                                         169
Sequence listings, R. 27a, R. 49                                                                                    244
Serbia and Montenegro, Art. 79                                                                                       57
Server - for publication, R. 49                                                                                     281
Sound recording in oral proceedings, Art. 116                                                                        77
Spain, reservations, Art. 167                                                                                       209
Specifications
  advanced ordering Art. 93                                                                                          65
  form, R. 53                                                                                                       279
Summonses to oral proceedings, receipt form, R. 71                                                                  288
Swiss Confederation, Art. 149                                                                                       140

T
Telex numbers, cancellation, R. 24(1)                                                                               222
Time limits under Art. 96(2), R. 84                                                                                 295
Title pages of European patent applications, Art. 93                                                                 64
Titles used by representatives, Art. 134(2)                                                                          95
Transfer of functions to Registrars DG3, Art. 23(4), R. 10(2)                                                        18
Transitional period, Art. 163(1)                                                                                    207



                                                                                                                    xxv
Two-letter country codes, Art. 129        92


U
USPTO, Art. 154, Art. 155, Art. 157(3)    180

V
Video conference, Art. 116                79
Vienna
  not a filing office, Art. 75             42
  sub-office, Art. 7                        3
Vienna Convention, Part IV                393

W
Web site on the Internet, Part IV         380
WebRegPro application, Art. 127            83
WIPO agreement with EPO, Art. 150         148
Witnesses or experts, fees, R. 74(4)      289
World Trade Organization (WTO), Part IV   394




xxvi
xxvii
                                                                                                             List of regulations




List of regulations in chronological order as they have been
published in the OJ EPO

OJ 1978,   91    Art. 134(8)            Decision amending the Arrangements for deposit accounts                             102
OJ 1978, 201     Art. 33                Authenticity of decisions in the three languages of the EPO                          26
OJ 1978,   271   Art. 151               Time for payment of the fees for international applications                         172
OJ 1978,   327   Art. 163               Expiry of the transitional period provided for in Article 163, paragraph 1          207
OJ 1979,    92   R. 101(9)              Authorisation of an association                                                     324
OJ 1979,   159   Art. 55(1)(b)          International Exhibitions                                                            30
OJ 1979,   289   R. 84                  Length of time-limits to be fixed under Article 96(2)                               295
OJ 1979,   290   R. 38(3) and (4)       Application of Rule 38 (3)(4) EPC to European divisional applications               264
OJ 1979, 427     Art. 155               Date on which the preliminary examination fee is payable to the EPO                 185
OJ 1979, 452     Art. 134(2)            Use of titles by Professional Representatives before the EPO                         95
OJ 1979, 463     Art. 154               Agreement with Netherland on international-type searches                            178
OJ 1980, 36      R. 80                  Public notification                                                                 294
OJ 1980, 48      Legal adv. 4/80        Period of submitting a separate set of claims for Austria - Legal advice 4/80       406
OJ 1980, 68      R. 84                  Length of time-limits to be fixed under Article 96(2)                               295
OJ 1980,   101   R. 37(1)               Instructions for paying renewal fees                                                262
OJ 1980,   176   Art. 134(8)            Regulation on discipline for professional representatives                           108
OJ 1980,   177   Art. 134(8)            Additional rules of procedure of the Disciplinary Board of the EPO                  109
OJ 1980,   183   Art. 134(8)            Additional rules of procedure of the Disciplinary Board of the EPO                  113
OJ 1980,   188   Art. 134(8)            Additional rules of procedure of the Disciplinary Board of Appeal of the EPO        117
OJ 1980,   380   R. 28                  Declaration by the EPO specified in Article 9 of the Budapest Treaty                246
OJ 1980,   397   R. 78                  Use of an address for correspondence by applicants without representative           293
OJ 1980,   407   Art. 149               Treaty between Switzerland and Liechtenstein on Patent Protection                   140
OJ 1981,     6   Legal adv. 8/80        Withdrawal of a European patent application - Legal advice 8/80                     413
OJ 1981,    74   R. 49                  Cover page of the patent specification                                              278
OJ 1981,   221   Art. 55(1)(b)          International Exhibitions                                                            30
OJ 1981,   358   R. 28(4)               Procedure for informing the EPO that the ‘expert’ option has been chosen            255
OJ 1981,   359   R. 28                  Recognition of microbiological experts for the purpose of Rule 28 EPC               246
OJ 1981, 531     Art. 154               Implementation of PCT Rule 48.3(b) - Agreements with the Belgian Patent Office      180
OJ 1982, 57      Legal adv. 11/82       Revocation of the European patent during opposition proceedings -
                                        Legal advice 11/82                                                                  419
OJ 1982, 196     Legal adv. 13/82       Further processing of the European patent application - Legal advice 13/82          420
OJ 1982, 323     Art. 154               EPO as International Searching Authority by the US Patent and Trademark Office      180
OJ 1982,   448   R. 44                  Annex to the European search report                                                 268
OJ 1983,    37   Art. 55(1)(b)          International Exhibitions                                                            31
OJ 1983,   100   R. 74(4)               Compensation and fees payable to witnesses and experts                              289
OJ 1983,   458   R. 92(2)               Recording of certain information in the Register of European Patents                315
OJ 1983,   459   Art. 129               Changes in the European Patent Bulletin                                              89
OJ 1984,    51   Art. 55(1)(b)          International Exhibitions                                                            31
OJ 1984, 88      R. 49                  Notice concerning the form of European patent specifications                        279
OJ 1984, 272     R. 37(1)               Instructions for paying renewal fees                                                262
OJ 1984, 296     Art. 39                Proportion of renewal fees remitted to the EPO                                       29
OJ 1985, 32      Art. 55(1)(b)          International Exhibitions                                                            31
OJ 1985, 42      R. 101(3)              General authorisations                                                              323
OJ 1985, 141     Legal adv. 16/85       Request for a decision after the noting of loss of rights - Legal advice 16/85      425
OJ 1985,   249   Art. 23(4)             Transfer of functions to the Registrars of the Boards of Appeal                      18
OJ 1985,   249   R. 10(2)               Transfer of functions to the Registrars of the Boards of Appeal                     220
OJ 1985,   331   Art. 154               EPO as International Searching Authority by the Japanese Patent Office              182
OJ 1985,   331   Art. 155               EPO as International Preliminary Examining Authority by the Japanese Patent
                                        Office                                                                              190
OJ 1985, 347     Legal adv. 3/85 rev.   Claims fees - multiple sets of claims - Legal advice 3/85 rev.                      404
OJ 1986, 43      Art. 55(1)(b)          International Exhibitions                                                            32



xxviii
                                                                                                            List of regulations



OJ 1986,    61   R. 92(2)                Recording of certain information in the Register of European Patents                   315
OJ 1986,    63   Art. 116                Sound recording devices in oral proceedings                                             77
OJ 1986,    63   Art. 129                Changes in the European Patent Bulletin                                                 89
OJ 1986,   269   R. 28                   European patent applications and patents - micro-organisms                             249
OJ 1986,   327   R. 101(3)               General authorisations                                                                 323
OJ 1986,   327   R. 92(2)                Recording of certain information in the Register of European Patents                   316
OJ 1987,    86   Art. 55(1)(b)           International Exhibitions                                                               32
OJ 1987,   242   Art. 93                 Advance ordering of additional patent specifications                                    65
OJ 1987,   266   Art. 154                Withdrawal by the USA of the reservation concerning Chapter II PCT                     181
OJ 1987,   266   Art. 155                Withdrawal by the USA of the reservation concerning Chapter II PCT                     189
OJ 1987,   426   Art. 167                Expiry of the reservations by Austria                                                  208
OJ 1988,    37   Art. 129                Changes in the European Patent Bulletin                                                 91
OJ 1988,   159   Art. 55(1)(b)           International Exhibitions                                                               32
OJ 1989,   156   Art. 55(1)(b)           International Exhibitions                                                               32
OJ 1989,   177   Art. 20                 Responsibilities of the Legal Division                                                   6
OJ 1989,   177   R. 9(2)                 Responsibilities of the Legal Division                                                 215
OJ 1989,   180   R. 84                   Extensions of time periods in Examination and Opposition Proceedings                   296
OJ 1989,   218   Art. 10(2)              Setting up of a Filing Office in Berlin                                                  4
OJ 1989,   393   R. 58                   Application of Rule 58(4) in opposition proceedings                                    287
OJ 1990,   183   Art. 55(1)(b)           International Exhibitions                                                               33
OJ 1990,   260   Legal adv. 17/90        Authentic text of a granted patent when the specification contains misprints - Legal
                                         advice 17/90                                                                           427
OJ 1990, 304     R. 85(2)                General interruptions in the delivery of mail (DE)                                     305
OJ 1990, 306     R. 24(4)                Notice concerning EPO confirmation of receipt                                          242
OJ 1990, 365     R. 95a(1)               Keeping of files relating to European patent applications and patents                  319
OJ 1990,   404   Art. 20                 Correspondence with the Legal Division                                                   7
OJ 1990,   404   R. 9(2)                 Correspondence with the Legal Division                                                 215
OJ 1990,   443   Art. 154                EPO as International Searching Authority by the Japanese Patent Office                 183
OJ 1990,   443   Art. 154                EPO as International Searching Authority by the US Patent and Trademark Office         182
OJ 1990,   443   Art. 155                EPO as International Preliminary Examining Authority by the Japanese Patent
                                         Office                                                                                 191
OJ 1990, 443     Art. 155                EPO as IPEA by the US Patent and Trademark Office                               190
OJ 1990, 455     R. 48                   Publication of European patent applications whose deemed withdrawal has not yet
                                         become definitive                                                               274
OJ 1990, 492     Art. 7                  Integration of INPADOC into the EPO, Creation of an EPO sub-office in Vienna             3
OJ 1991,    57   R. 85(2)                General interruptions in the delivery of mail (GR)                                     305
OJ 1991,   124   Art. 154                EPO as International Searching Authority by the Polish Patent Office                   183
OJ 1991,   124   Art. 155                EPO as International Preliminary Examining Authority by the Polish Patent Office       191
OJ 1991,   223   Art. 10(2)              Setting-up of a further filing office in Munich (‘Pschorrhöfe’)                          4
OJ 1991,   224   R. 26(2)(b)             Notice concerning the amendment of the title of the invention                          243
OJ 1991,   240   Art. 55(1)(b)           International Exhibitions                                                               33
OJ 1991,   266   R. 17(3)                Renouncing the Notification to the inventor                                            221
OJ 1991,   266   R. 85(2)                General interruptions in the delivery of mail (UK)                                     306
OJ 1991,   461   R. 28                   Micro-organisms – Budapest Treaty                                                      253
OJ 1991,   489   R. 101(1)               Filing of authorisations                                                               321
OJ 1991,   573   Legal adv. 6/91 rev.    Payment of fees- Refunds of fees or other sums - Legal advice 6/91 rev.                411
OJ 1991,   577   R. 71                   Acknowledgement of receipt for summonses to oral proceedings                           288
OJ 1991,   623   Art. 142                Designation of Contracting States for the ‘subsequent choice of a Community
                                         Patent’                                                                                139
OJ 1992, 183     Art. 75                 Vienna sub-office not a filing office                                                   42
OJ 1992, 202     Art. 55(1)(b)           International Exhibitions                                                               34
OJ 1992, 301     Art. 167                Expiry of the reservations by Spain and Greece                                         209
OJ 1992,   306   R. 85(2)                General interruptions in the delivery of mail (DE)                                     306
OJ 1992,   312   R. 27a                  Notice concerning the computer program PatentIn                                        245
OJ 1992,   383   Art. 151                Late payment fee under Rule 16bis.2 PCT                                                173
OJ 1992,   662   Legal adv. 10/92 rev.   Euro-PCT application - Legal advice 10/92 rev.                                         414
OJ 1993,    59   R. 35                   OCR-readable patent applications                                                       258




                                                                                                                                xxix
List of regulations



OJ 1993, 103          Art. 155          PCT request form and the demand form for international preliminary examination    185
OJ 1993,   229        Legal adv. 5/93   Calculation of aggregate time limits - Legal advice 5/93                          407
OJ 1993,   266        Art. 55(1)(b)     International Exhibitions                                                          34
OJ 1993,   459        R. 85(2)          General interruptions in the delivery of mail (UK)                                307
OJ 1993,   540        Art. 150(2)       Language of correspondence under the PCT                                          171
OJ 1993,   540        R. 1(2)           Language of correspondence under the PCT                                          213
OJ 1993,   636        R. 85(2)          General interruptions in the delivery of mail (UK)                                307
OJ 1993,   764        Art. 150          The International Bureau of WIPO                                                  148
OJ 1994,    74        R. 32             Filing of drawings                                                                257
OJ 1994,    75        Art. 79           Extension of European patents to Slovenia                                          45
OJ 1994,   201        Art. 79           Extension of European patents to Latvia and Lithuania                              50
OJ 1994,   276        Art. 55(1)(b)     International Exhibitions                                                          34
OJ 1994,   412        Art. 129          Two-letter country codes                                                           92
OJ 1994,   527        Art. 79           Extension of European patents to Latvia and Lithuania                              51
OJ 1994,   538        Art. 151          Filing of authorisations with the EPO as receiving Office                         174
OJ 1994,   538        R. 101(1)         Filing of authorisations with the EPO as receiving Office                         322
OJ 1994,   583        Art. 116          Interpretation in oral proceedings                                                 78
OJ 1994,   583        R. 85(2)          General interruptions in the delivery of mail (DE)                                308
OJ 1994,   691        Art. 157(3)       Fee reduction by designated/elected Offices where the EPO has acted as ISA or
                                        IPEA                                                                              204
OJ 1994,   952        R. 85(2)          General interruptions in the delivery of mail (PT)                                308
OJ 1995,    62        Other             Form 1140 for the furnishing of samples of deposited micro-organisms              377
OJ 1995,   235        Art. 127          Free subscription to the online services                                           84
OJ 1995,   270        Art. 55(1)(b)     International Exhibitions                                                          34
OJ 1995,   345        Art. 79           Extension of European patents to Latvia and Lithuania                              52
OJ 1995,   489        Art. 116          Communication concerning the obligation to give notice before boards of appeal     79
OJ 1995,   489        R. 2(1)           Communication concerning the obligation to give notice in proceedings             214
OJ 1995,   490        R. 24(1)          Notice concerning the filing of patent applications by facsimile                  231
OJ 1995,   490        R. 36(5)          Notice concerning the filing of patent applications by facsimile                  261
OJ 1995,   803        Art. 79           Extension of European patents to Albania                                           52
OJ 1995,   841        Art. 97(6)        Acceleration of the proceedings                                                    69
OJ 1996, 81           Art. 87(1)        Priority conferring effect of the US ‘provisional application for patent’          62
OJ 1996, 81           R. 85(2)          General interruptions in the delivery of mail (FR)                                309
OJ 1996, 82           Art. 79           Extension of European patents to Albania                                           53
OJ 1996, 150          R. 85(2)          General interruptions in the delivery of mail (FR)                                309
OJ 1996, 246          Art. 55(1)(b)     International Exhibitions                                                          34
OJ 1996, 553          RRF - General     Transmission by diskette of particulars about the purpose of payments             341
OJ 1996,   596        Art. 33           Notice concerning amendments to Rules 28 EPC and Rule 28a EPC                      26
OJ 1996,   596        R. 28             Notice concerning amendments to Rule 28 EPC and Rule 28a EPC                      254
OJ 1996,   596        R. 28a            Notice concerning amendments to Rule 28 EPC and Rule 28a EPC                      256
OJ 1996,   640        Other             Introduction of                                                                   379
OJ 1997,    32        R. 85(2)          General interruptions in the delivery of mail (GB)                                310
OJ 1997,    79        Art. 79           More time to pay designation fees                                                  58
OJ 1997,   115        Art. 93           Publication of ‘extension states’ on A and B document                               64
OJ 1997,   190        Art. 55(1)(b)     International Exhibitions                                                           35
OJ 1997,   214        R. 85(2)          General interruptions in the delivery of mail (DE)                                 310
OJ 1997,   345        Art. 79           Extension of European patents to Macedonia                                          54
OJ 1997,   350        Art. 134(8)       Establishment of an Institute of Professional Representatives consolidated version 96
OJ 1997,   394        Art. 155          Spain to be bound by Chapter II of the PCT                                         188
OJ 1997,   429        Art. 79           New patent law in Hong Kong                                                        58
OJ 1997,   479        Art. 93           Changes in EPO publications                                                        63
OJ 1997,   538        Art. 79           Extension of European patents to Macedonia                                         54
OJ 1997,   575        Other             The European Patent Office Web site on the Internet                               380
OJ 1997,   576        Art. 127          Register of European Patents on-line; further user possibilities                   85
OJ 1997,   592        Art. 150          Amendment of PCT Regulations                                                      145
OJ 1998,   143        R. 24(1)          Beta-test of the PCT-EASY software for the filing of international applications   237




xxx
                                                                                                            List of regulations



OJ 1998, 143        R. 36(5)           Beta-test of the PCT-EASY software for the filing of international applications        261
OJ 1998,   211      Art. 134(8)        Notice concerning decisions taken by the Disciplinary Board of Appeal                  120
OJ 1998,   230      Art. 55(1)(b)      International Exhibitions                                                               35
OJ 1998,   256      R. 85(2)           General interruptions in the delivery of mail (DE)                                     311
OJ 1998,   282      Art. 151           Late payment fee under Rule 58bis.2 PCT                                                173
OJ 1998,   332      Art. 150           Amendment of PCT Regulations                                                           146
OJ 1998,   359      Legal Advice       Cancellation of Legal advice notices                                                   403
OJ 1998,   360      R. 95a(1)          Decision concerning phased implementation and use of PHOENIX electronic file
                                       system                                                                                 319
OJ 1998,   361      Art. 99            Accelerated processing of oppositions                                                   74
OJ 1998,   362      Art. 106           Accelerated processing before the boards of appeal                                      76
OJ 1998,   554      R. 85(1)           Extension of time-limits on days where the EPO filing office is not open - List 1999   298
OJ 1998,   597      Other              Changes to important EPO forms                                                         375
OJ 1998, 598        Art. 93            Paragraph numbering in European patent documents                                        64
OJ 1998,S.2, p.59   R. 27a             Presentation of nucleotide and amino acid sequences                                    244
OJ 1999, 80         R. 111(2)          Decision on the filing of priority documents                                           328
OJ 1999, 80         R. 38(3) and (4)   Decision on the filing of priority documents                                           264
OJ 1999, 90         R. 44              Publication of the annex to the European search report                                 270
OJ 1999, 133        Other              The European Patent Office Web site on the Internet                                    380
OJ 1999,   145      National Law       Impact of the EPC on National Law                                                      400
OJ 1999,   165      R. 24(1)           EASY for international applications                                                    238
OJ 1999,   183      Art. 79            Extension of European patents to Slovenia                                               50
OJ 1999,   242      Art. 55(1)(b)      International Exhibitions                                                               35
OJ 1999,   296      Legal adv. 19/99   Filing of a translation of the previous application or a declaration under
                                       Rule 38(4) EPC - Legal advice 19/99                                                    428
OJ 1999,   300      Art. 150           Carrying out of international-type searches                                            169
OJ 1999,   312      Other              Decisions of the EPO boards of appeal on the Internet                                  381
OJ 1999,   329      Art. 150           Access to PCT files                                                                    150
OJ 1999,   357      Art. 5(2) RRF      Notice concerning changes to the debt recovery procedure                               363
OJ 1999,   504      R. 9(3)            Entrustment to non-examining staff of certain duties                                   216
OJ 1999,   509      R. 24(1)           Correspondence with the Office via e-mail                                              222
OJ 1999,   572      R. 85(1)           Closing of the European Patent Office on 3rd and 4th January 2000                      298
OJ 1999,   695      R. 85(1)           Extension of time-limits on days where the EPO filing office is not open - List 2000   299
OJ 1999,   747      Art. 153           Guide for applicants - part 2: PCT procedure before the EPO - ‘euro-PCT’               175
OJ 1999,   747      Art. 155           Guide for applicants - part 2: PCT procedure before the EPO – ‘euro-PCT’               186
OJ 1999,   747      Art. 156           Guide for applicants - part 2: PCT procedure before the EPO – ‘euro-PCT’               192
OJ 2000,   224      Art. 55(1)(b)      International Exhibitions                                                               35
OJ 2000,   227      R. 111(2)          Decision on the inclusion of priority documents in the files                           328
OJ 2000,   227      R. 38(3) and (4)   Decision on the inclusion of priority documents in the files                           266
OJ 2000,   367      R. 49              Decision concerning the publication of European patent applications in
                                       electronic form                                                                        278
OJ 2000,   368      R. 49              Notice concerning the publication of European patent applications                      279
OJ 2000,   369      Other              Changes to important EPO forms                                                         375
OJ 2000,   446      Art. 154           Fee reduction in favour of nationals of certain states                                 184
OJ 2000,   456      Art. 116           Oral proceedings before the EPO                                                         77
OJ 2000,   458      R. 24(1)           Notice concerning correspondence with the Office via e-mail                            223
OJ 2000,   506      R. 85(1)           Extension of time-limits on days where the EPO filing office is not open - List 2001   300
OJ 2001,   117      Art. 93            New publication system for corrections to A and B documents                             66
OJ 2001,   117      Art. 98            New publication system for corrections to A and B documents                             70
OJ 2001,   148      Art. 99            Note on opposition procedure in the EPO                                                 71
OJ 2001,   227      Art. 55(1)(b)      International Exhibitions                                                               36
OJ 2001,   458      R. 93(d)           Parts of the file excluded from inspection                                             317
OJ 2001,   459      Art. 75            Accelerated prosecution of European patent applications - ‘PACE’                        43
OJ 2001,   465      Art. 75            New patent application numbering system (see R. 24(2) EPC)                              44
OJ 2001,   465      R. 24(2)           New patent application numbering system                                                239
OJ 2001,   521      Art. 10c RRF       Rules relating to Fees - deposit accounts                                              370
OJ 2001,   523      R. 85(1)           Extension of time-limits on days where the EPO filing office is not open - List 2002   300



                                                                                                                              xxxi
List of regulations



OJ 2001, 524          RRF - General      Introduction of the euro                                                               331
OJ 2001, 539          Art. 155           Rationalisation of international preliminary examination procedure at the EPO          186
OJ 2001, 549          Art. 65            Agreement on the application of Article 65 EPC                                          38
OJ 2001, 563          R. 35(2)           Number of copies to be filed of the documents making up the European patent
                                         applications                                                                           260
OJ 2001, 563          R. 85(2)           General interruptions in the delivery of mail (US)                                     311
OJ 2001, 601          Art. 150           Amended Agreement between EPO and WIPO                                                 151
OJ 2002, 52           Art. 150           Limitation of the EPO's competence as a PCT authority                                  164
OJ 2002, 56           Art. 10(2) RRT     Criteria for refund of search fee                                                      365
OJ 2002, 58           RRF - General      Rules relating to Fees                                                                 334
OJ 2002, 112          R. 51              Amendment of Rule 25(1), Rule 29(2) and Rule 51 EPC                                    283
OJ 2002, 162          Art. 5(2) RRF      Decision concerning the payment of fees and costs at the Information Office
                                         in Munich                                                                              364
OJ 2002,   175        Art. 150           Limitation of the EPO's competence as a PCT authority                                  168
OJ 2002,   192        R. 38(5)           Requirement to file a translation of the previous application                          267
OJ 2002,   228        Art. 55(1)(b)      International Exhibitions                                                               36
OJ 2002,   260        Art. 150           Business methods                                                                       169
OJ 2002,   515        R. 24(1)           Notice concerning the discontinuation of EP-EASY project                               236
OJ 2002, 543          R. 24(1)           Decision on the electronic filing of patent applications                               224
OJ 2002, 545          R. 24(1)           Decision on the electronic filing of patent applications                               225
OJ 2002, 549          R. 85(1)           Extension of time-limits on days where the EPO filing office is not open - List 2003   301
OJ 2003, 23           Art. 127           New tool for use with the European Patent Register online                               82
OJ 2003, 58           Art. 23(4)         Rules of procedure of the Enlarged Board of Appeal, Consolidated version                 8
OJ 2003, 61           Art. 23(4)         Rules of procedure of the Boards of Appeal, Decision of Administrative Council          12
OJ 2003,    69        Art. 127           Use of the Online European Patent Register                                              83
OJ 2003,   161        Art. 55(1)(b)      International Exhibitions                                                               36
OJ 2003,   283        R. 84a             Application of Rule 84a EPC on the late receipt of documents                           297
OJ 2003,   370        R. 94              File inspection                                                                        318
OJ 2003,   382        Art. 150           Access to PCT files                                                                    150
OJ 2003,   383        Art. 155           Spanish Patent and Trademark Office as an International Preliminary Examining
                                         Authority                                                                              188
OJ 2003,   419        Art. 23(4)         Guidance for parties to appeal proceedings and their representatives                    19
OJ 2003,   507        R. 85(1)           Extension of time-limits on days where the EPO filing office is not open               302
OJ 2003,   523        Art. 134(8)        Code of Professional Conduct - epi                                                      99
OJ 2003,   566        R. 85(1)           Extension of time-limits on days where the EPO filing office is not open - List 2004   302
OJ 2003, 574          Art. 150           Changes in respect of PCT applications                                                 155
OJ 2003, 581          R. 85(2)           General interruptions in the delivery of mail (UK)                                     312
OJ 2003, 587          Art. 156           EPO form 1200 for entry of regional phase before EPO as designated or elected
                                         Office                                                                                 192
OJ 2003, 609          R. 24(1)           Electronic filing of documents within the meaning of Rule 36 EPC                       228
OJ 2003,   610        R. 24(1)           European application in XML format using PatXML                                        229
OJ 2003,   612        R. 77(1)           EPO Seals                                                                              291
OJ 2003,   631        Art. 150           Refund of search fees                                                                  157
OJ 2003,   633        Art. 150           Partial lifting of the limitation on the EPO's competence as a PCT authority           166
OJ 2004,    61        Other              My.epoline® portal                                                                     381
OJ 2004,   117        Art. 79            Extension of European patents to Croatia                                                56
OJ 2004, 179          Art. 79            Registration of European patents (UK) in overseas states or territories                 60
OJ 2004, 223          Art. 55(1)(b)      International Exhibitions                                                               36
OJ 2004, 270          R. 24(1)           Electronic filing of patent applications with the German Patent and Trade Mark
                                         Office (DPMA)                                                                          227
OJ 2004, 305          Art. 150           EPO discontinues its rationalised international preliminary examination procedure      156
OJ 2004,   323        R. 85(2)           General interruptions in the delivery of mail (IE)                                     312
OJ 2004,   374        R. 24(1)           Notice concerning the cancellation of telex numbers                                    222
OJ 2004,   375        R. 44              Pilot project concerning an Extended European Search Report                            270
OJ 2004,   449        R. 85(1)           Extension of time-limits on days where the EPO filing office is not open - List 2005   303
OJ 2004,   541        Art. 23(4)         Rules of procedure of the Boards of Appeal, Consolidated version                        13
OJ 2004,   562        R. 38(3) and (4)   Electronic filing of priority documents issued by the United States Patent and T
                                         rademark Office                                                                        265



xxxii
                                                                                                               List of regulations



OJ 2004, 563        Art. 79                  Extension of European patents to Serbia and Montenegro                               57
OJ 2004, 619        Art. 79                  Extension of European patents to Bosnia and Herzegovina                              57
OJ 2005,   5        RRF - General            Rules relating to Fees                                                              334
OJ 2005, 41         R. 24(1)                 Decision on the use of facsimile for filing patent applications                     232
OJ 2005, 44         R. 24(1)                  Notice concerning the filing of patent applications and other documents            233
OJ 2005, 122        R. 54                    Notice concerning the form of European patent specifications                        286
OJ 2005, 124        R. 49                    Decision concerning the form of publication of European patent applications,
                                             search reports and patent specifications                                            280
OJ 2005, 126        R. 49                    Notice concerning the introduction of electronic publication of European patent
                                             applications (A-documents) and (B-documents)                                        281
OJ 2005, 129        R. 51(4)                 Notice concerning the amendment of Rule 51(4) EPC                                   285
OJ 2005, 130        R. 108                   Notice concerning the changes to Rule 108 EPC                                       327
OJ 2005, 225        R. 27a                   Late furnishing fee under Rule 13ter PCT                                            244
OJ 2005,   226      Art. 154                 Protest procedure under the PCT                                                    177
OJ 2005,   248      Art. 75                  Agreement EPO/German Patent Office                                                  41
OJ 2005,   295      Art. 55(1)(b)            International Exhibitions                                                           36
OJ 2005,   326      Art. 127                 Register Plus, the new way of accessing the Online European Patent Register and
                                             Online Public File Inspection                                                       86
OJ 2005, 357        Legal adv. 15/05 rev.2   Auxiliary requests in examination and opposition proceedings - Legal advice 15/05 rev.2
                                                                                                                                422
OJ 2005,   363      R. 24(1)                 Mail addressed to the EPO                                                          230
OJ 2005,   366      Other                    Update of the Request for Grant form                                               376
OJ 2005,   393      Art. 134(8)              Decision of the Examination Board regarding the distribution of marks              131
OJ 2005,   422      Art. 157(3)              Reducing the fee for the supplementary European search where the international
                                             search report was drawn up by the Austrian Patent Office, by the National Board of
                                             Patents and Registration of Finland, by the Spanish Patent and Trademark Office or
                                             by the Swedish Patent and Registration Office                                      193
OJ 2005,   433      Art. 10(2) RRT           Criteria for refund of search fees                                                  368
OJ 2005,   435      Art. 157(3)              Introduction of the extended European search report                                 204
OJ 2005,   435      R. 44a                   Introduction of the extended European search report                                 271
OJ 2005,   444      Art. 75                  Termination of the Administrative Agreement between the DPMA and the EPO             41
OJ 2005,   463      Art. 150                 Revised amounts of the refund of search fees                                        159
OJ 2005,   476      R. 85(5)                  Dislocation in the delivery of mail on account of civil disorder                    314
OJ 2005,   477      R. 85(1)                 Extension of time-limits on days where the EPO filing office is not open - List 2006 303
OJ 2005,   519      R. 85(5)                  Dislocation in the delivery of mail on account of civil disorder                    314
OJ 2005,   546      Art. 157(3)              Reducing the fee for the supplementary European search where the international
                                             search report was drawn up by the Austrian Patent Office, by the National Board of
                                             Patents and Registration of Finland, by the Spanish Patent and Trademark Office or
                                             by the Swedish Patent and Registration Office                                        193
OJ 2005, 548        Art. 157(3)              Search fee for the supplementary European search is to be reduced                   198
OJ 2005, 577        Art. 157(3)              Search and examination fees                                                         199
OJ 2005,S.1, p.1    Art. 134(8)              Revised version of the arrangements for deposit accounts and their annexes          102
OJ 2005,S.1, p.1    Art. 5(2) RRF            Revised version of the arrangements for deposit accounts and their annexes          342
OJ 2005,S.1, p.18   Art. 5(2) RRF            Information concerning the automatic debiting procedure                             350
OJ 2005,S.1, p.2    Art. 5(2) RRF            Revised version of the arrangements for deposit accounts and their annexes          342
OJ 2005,S.1, p.3    Art. 5(2) RRF            Arrangements for deposit accounts                                                   343
OJ 2005,S.1, p.37   Art. 5(2) RRF            Arrangements for online fee payment via My.epoline                                  357
OJ 2005,S.1, p.42   Art. 5(2) RRF            Arrangements for debiting deposit accounts by diskette                              359
OJ 2005,S.1, p.45   Art. 5(2) RRF            Particulars to be supplied in the batch debit order                                 360
OJ 2005,S.1, p.46   Art. 5(2) RRF            Administrative Agreement between the EPO and the epi                                361
OJ 2005,S.1, p.49   Art. 134(8)              Debiting of EPI annual subscriptions from deposit accounts held with the EPO        102
OJ 2005,S.1, p.49   Art. 5(2) RRF            Debiting of EPI annual subscriptions from deposit accounts held with the EPO        363
OJ 2005,S.1, p.9    Art. 5(2) RRF            Arrangement for the automatic debiting procedure                                    346
OJ 2006,     8      RRF - General            Rules relating to Fees                                                             334
OJ 2006,    13      Art. 157(3)              Reducing the fee for the supplementary European search where the international
                                             search report was drawn up by the Austrian Patent Office, by the National Board of
                                             Patents and Registration of Finland, by the Spanish Patent and Trademark Office or
                                             by the Swedish Patent and Registration Office                                      194
OJ 2006,    83      Art. 10(2) RRT           Refund of search fees under Article 10(2)                                          366




                                                                                                                               xxxiii
List of regulations



OJ 2006,    85        Other            Notice concerning forms and publications available from the EPO                        373
OJ 2006,   111        Art. 150         Revised amounts of the refund of search fees (France)                                  160
OJ 2006,   149        Art. 150         Limitation of the EPO's competence as a PCT authority                                  167
OJ 2006,   189        Art. 10(2) RRT   Refund of search fees under Article 10(2)                                              367
OJ 2006,   192        Art. 157(3)       Search and examination fees                                                           195
OJ 2006,   204        Art. 127         Online Fee Payment service                                                              86
OJ 2006,   252        Art. 150         Revised amounts of the refund of search fees (adjustment of fees and prices)           162
OJ 2006,   255        RRF - General    Rules relating to Fees                                                                 334
OJ 2006, 285          Other            Updated EPO Forms 1010, 1037 and 1038                                                  378
OJ 2006, 308          Other            International Patent treaties - Paris Convention for the Protection of Industrial
                                       Property                                                                               383
OJ 2006, 312          Other            Patent Cooperation Treaty                                                         385
OJ 2006, 315          Other            Budapest Treaty on the International Recognition of the Deposit of Micro-organisms388
OJ 2006,   315        Other             Patent Law Treaty (PLT)                                                               387
OJ 2006,   317        Other             International Depositary Authorities under Article 7 of the Budapest Treaty           390
OJ 2006,   320        Other             Agreement establishing the World Trade Organization (WTO)                             394
OJ 2006,   320        Other             Vienna Convention on the Law of Treaties                                              393
OJ 2006,   323        Other             Convention on the Grant of European Patents                                           396
OJ 2006,   326        Art. 55(1)(b)    International Exhibitions                                                               36
OJ 2006,   327        Other             London Agreement                                                                      398
OJ 2006,   373        R. 24(1)         Processing of documents filed by fax with the EPO at The Hague                         233
OJ 2006,   405        R. 48            Completion of the technical preparations for publication                               275
OJ 2006,   406        R. 48            Withdrawal of the application to prevent publication                                   275
OJ 2006,   409        R. 48            Completion of technical preparations for publication                                   276
OJ 2006,   428        R. 49            Decision on the summary listing of references cited by the applicant                   280
OJ 2006,   439        R. 104(1)        Number of copies to be filed of the documents making up the international patent
                                       application                                                                            326
OJ 2006, 445          R. 85(1)         Extension of time-limits on days where the EPO filing office is not open - List 2007   304
OJ 2006, 446          Art. 127         EPO Online Multiplay Tool                                                               88
OJ 2006, 447          Art. 153         EPO Form 1200 for entry into the European phase                                        175
OJ 2006,   447        Other            EPO Form 1200 for entry into the regional phase before EPO                             378
OJ 2006,   475        Art. 134(8)      European qualifying examination 2008                                                   138
OJ 2006,   490        RRF - General    Guidance for the payment of fees, costs and prices                                     332
OJ 2006,   535        Art. 127         Inspection of files and online consultation of the European Patent Register             81
OJ 2006,   555        Art. 150         Limitation of the EPO's competence as a PCT authority                                  166
OJ 2006,   585        Art. 116         Interviews and oral proceedings to be held as a video conference                        79
OJ 2006, 610          R. 24(1)         Introduction of a central e-mail address for the whole Office                          223
OJ 2006,S.12, p.1     Art. 134(8)      Regulation on the European qualifying examination for professional representatives     121
OJ 2006,S.12, p.14    Art. 134(8)      Implementing provisions to the Regulation on the European qualifying examination       127
OJ 2006,S.12, p.17    Art. 134(8)      Qualifications required for enrolment for the European qualifying examination          129
OJ 2006,S.12, p.21    Art. 134(8)      Instructions to candidates concerning the conduct of the examination                   131
OJ 2006,S.12, p.25    Art. 134(8)      Instructions to candidates for preparing their answers                                 133
OJ 2006,S.12, p.31    Art. 134(8)      Instructions to invigilators                                                        136
OJ 2007, 42           R. 85(3)         Holidays observed by EPO filing offices and the national patent authorities in 2007 313




xxxiv
I.
DECISIONS BASED ON ARTICLES
OF THE EPC, AND NOTICES




                              1
2
                                                                                                      Article 7 – OJ 1990, 492



                                                                                                                              Article 7 – OJ 1990, 492




Notice of the President of the European Patent Office
dated 10 October 1990 concerning the integration of INPADOC
into the European Patent Office

OJ 1990, 492
1.   Under an Agreement of 2 July 1990 between the European Patent Organisation and the Republic of Austria the
     International Patent Documentation Centre (INPADOC) will be integrated into the European Patent Office as from 1
     January 1991.

2.   In accordance with the aim of the European patent information policy which is “primarily to improve access to patent
     information in Europe for both the general public and industry - in particular small and medium-sized companies - in
     order to stimulate innovative activity, through the national Offices of Member States of the EPO . . .”, the integration of
     INPADOC will bring the following advantages:

     (1)   Strengthening the worldwide patent data exchange system
     (2)   Extending to the worldwide exchange of bibliographic data the principles underlying European patent information
           policy (non-exclusivity, price policy, worldwide co-operation with national patent offices)
     (3)   Ensuring continuity in the services provided under the Agreement of 2 May 1972 between the Republic of Austria
           and the World Intellectual Property Organization (WIPO) concerning the establishment of an International Patent
           Documentation Centre
     (4)   Extension and enhancement of the EPO’s own bibliographic databases, elimination of duplication of work and
           improved internal use of such databases
     (5)   Expansion of the patent information services provided to industry and other European users by national Offices
           and commercial operators.

3.   The Integration Agreement provides for the EPO to take over INPADOC as its universal successor in title as from 1
     January 1991. Existing legal ties with third parties are not affected. The transfer of assets takes effect immediately after
     the Agreement enters into force. As a legal consequence INPADOC will be dissolved. Its entire of universal succession
     in title permanent workforce will be taken over by the EPO.

     The European Patent Organisation will become party to all contracts and agreements concluded by INPADOC, but the
     Agreement of 2 May 1972 between the Republic of Austria and WIPO remains a res inter alios acta as far as the
     Organisation is concerned. To ensure that after INPADOC’s integration into the EPO the Republic of Austria remains
     able to fulfil its obligations under the Agreement with WIPO, the Integration Agreement requires the EPO to perform
     henceforth the services referred to in Articles II and III of that Agreement, namely the patent family and classification
     services central to INPADOC’s activities.

     The EPO will seek to perform the services in question not only for patent offices which already have contracts with
     INPADOC but for all patent offices of WIPO Member States, including any which may wish to enter into contracts of this
     kind at some future time.

     In the event of that a national Office of a WIPO Member State not wishing to have a contract with the European Patent
     Office, the Integration Agreement provides for the Austrian Patent Office to act in the EPO’s stead as the contractual
     partner of the national Office in question.

4.   An EPO sub-office will be created in Vienna as from 1 January 1991.
     The sub-office will in particular perform services of the kind referred to in the Integration Agreement, namely patent
     family and classification services. It may however also be assigned other tasks. The EPO’s present plans are for the
     sub-office to perform the full range of activities of the Principal Directorate Patent Information.




                                                                                                                                           3
Article 10(2) – OJ 1989, 218



                                                                                                                                           Article 10(2)
                                                                                                                          Article 10(2) – OJ 1989, 218




Decision of the President
of the European Patent Office
dated 10 May 1989 on the setting up
of a Filing Office in the Berlin sub-office
of the European Patent Office

OJ 1989, 218
The President of the European Patent Office,
having regard to Article 10, paragraph 2(a), EPC,
has decided as follows:

Article 1
A filing office within the meaning of Article 75, paragraph 1(a), EPC shall be set up in the Berlin sub-office of the European
Patent Office for the receipt of documents and payments. It shall be authorised to receive European patent applications,
international applications and other documents, and to accept payment of fees due to the European Patent Office.

Article 2
This decision shall enter into force on 1 July 1989.
Done at Munich, 10 May 1989
PAUL BRAENDLI
President


                                                                                                                          Article 10(2) – OJ 1991, 223




Decision of the President
of the European Patent Office
dated 18 March 1991 on the setting up
of a filing office in
the Munich building “Pschorrhöfe”

OJ 1991, 223
The President of the European Patent Office,
having regard to Article 10, paragraph (a), EPC,
has decided as follows:

Article 1
A filing office within the meaning of Article 75, paragraph 1(a), EPC, shall be set up in the Munich building “Pschorrhöfe” of
the European Patent Office for the receipt of documents. It shall be authorised to receive European patent applications,
international applications and other documents.




4
                                                        Article 10(2) – OJ 1991, 223



Article 2
This decision shall enter into force on 2 April 1991.
Done at Munich, 18 March 1991.
PAUL BRAENDLI
President




                                                                                  5
Article 20 – OJ 1989, 177



                                                                                                                                                                          Article 20
                                                                                                                                                          Article 20 – OJ 1989, 177




Decision of the President of the European Patent Office
dated 10 March 1989 concerning the responsibilities
of the Legal Division

OJ 1989, 177
The President of the European Patent Office, having regard to Article 20 and Rule 9(2) EPC, has decided as follows:

1.    Sole responsibility for the following duties shall be vested in the Legal Division1:

1.1 Registers of Representatives

      (a) Entry in, and deletion from, the list of professional representatives (Article 134(1) to (3) and 163(1) to (3), (5) to
          (7), Rules 102 and 106 EPC; Articles 4(1)(d), (e) and 28(2) RDR2)
    (b)   Registration and deletion of associations (Rule 101(9) EPC; cf. OJ EPO 1979, 92).
    (c)   Registration and deletion of legal practitioners (Article 134(7) EPC).
    (d)   Registration and deletion of general authorisations (Article 133(3) 1st sentence, Rule 101(2), (3) EPC; cf.
          OJ EPO 1985, 42).
1.2 Register of Patents

      (a)      Procedure where the applicant or proprietor is not entitled (Articles 61(1)(a) and (99(5), Rules 13, 14 and
               16 EPC).
      (b)      Interruption and resumption of proceedings (Rule 90 EPC).
      (c)      Registration and cancellation of licences and other rights (Articles 71, 73 and 74, Rules 21 and 22 EPC).
      (d)3     Registration of transfers and changes of name once an adverse decision seems likely (Articles 71, 72 and 74,
               Rules 20 and 61 EPC; cf OJ EPO 1987, 215).
      (e)3     Rectification of the designation of an inventor once an adverse decision seems likely or after the opposition phase
               (Rule 19 EPC; cf. OJ EPO 1987, 215, 226 point 6.3 and 6.4).

2.    This decision shall apply as from 1 January 1989.

PAUL BRAENDLI
President




1
     The duties of the Legal Division are performed by Directorate 5.1.1 (Representation and Register of Patents)
2
     RDR = Regulation on discipline for professional representatives, OJ EPO 1978, 91
3
     Cf. the notice of the Vice-President Directorate-General 2 of the EPO concerning duties of the Examining or Opposition Divisions I. points 27 and 28, II.
     points 25 and 26. This text is reproduced in the present volume under R. 9(3) - 1 and 2.




6
                                                                                                                          Article 20 – OJ 1990, 404



                                                                                                                                                Article 20 – OJ 1990, 404




Notice of the Vice-President,
Directorate-General 5 of the European Patent Office
dated 5 July 1990 concerning correspondence with the Legal
Division

OJ 1990, 404
1.    The Legal Division1 takes all EPO decisions concerning the entry and deletion of certain data in the Registers of
      Representatives and the Register of Patents (OJ EPO 1989, 177). For the Register of Patents this involves:

      (a)     Procedure where the applicant or proprietor is not entitled (Articles 61(1)(a) and 99(5), Rules 13, 14 and 16 EPC).
      (b)     Interruption of proceedings in the event of death, legal incapacity or bankruptcy, and resumption of proceedings
              (Rule 90 EPC).
      (c)     Registration and cancellation of licences and other rights (Articles 71, 73 and 74, Rules 21 and 22 EPC).

2.    From 1 September 1990 the Legal Division will have its own dossiers and file numbers for its Register of Patents
      work. These file numbers will be composed of the word “LEGAL”, the relevant EPC provision (e.g. R 90), a serial
      number (e.g. 2) and the year (e.g. 89), i.e. in this example: LEGAL R 90-2/89.

      Parties are asked to address requests and communications relating to procedures under point 1(a) to (c) above direct
      to the Legal Division in Munich, and to conduct with it all ensuing correspondence as well, quoting the LEGAL file
      number rather than the application or patent number. This will greatly simplify and speed up matters.

3.    The DG 1 and DG 2 dossiers affected will be updated as proceedings before the Legal Division unfold.

      Requests for registration of transfers of rights or changes of name, or for correction of designation of inventor, should
      continue to be addressed to DG 1 or DG 2.




1
     The Legal Division’s duties are performed by Directorate 5.1.1 (Representation and Register of Patents) in Munich.




                                                                                                                                                              7
Article 23(4) – OJ 2003, 58



                                                                                                                                  Article 23(4)
                                                                                                                  Article 23(4) – OJ 2003, 58




Decision of the Administrative Council of 12 December 2002
approving amendments to the Rules of Procedure of
the Enlarged Board of Appeal of the European Patent Office

OJ 2003, 58
THE ADMINISTRATIVE COUNCIL OF THE EUROPEAN PATENT ORGANISATION,

Having regard to the European Patent Convention, and in particular Article 23, paragraph 4, thereof,

Having regard to the amendments to the Rules of Procedure of the Enlarged Board of Appeal, adopted on 28 October 2002
under Rule 11, paragraph 2 of the Implementing Regulations to the European Patent Convention,

HAS DECIDED AS FOLLOWS:

Article 1
The amendments to the Rules of Procedure of the Enlarged Board of Appeal as shown in the Annex to this decision, are
hereby approved.

Article 2
This Decision shall enter into force on 1 May 2003.
Done at Munich, 12 December 2002
For the Administrative Council
The Chairman
Roland GROSSENBACHER




8
                                                                                                                  Article 23(4) – OJ 2003, 58




RULES OF PROCEDURE
OF THE ENLARGED BOARD OF APPEAL

Version consolidating the amendments published in
OJ EPO 1989, 362; OJ EPO 1994, 443, and in OJ EPO 2003, 58
Article 1
Business distribution scheme
   1
(1) Before the beginning of each working year the members of the Enlarged Board of Appeal appointed under Article 11
     paragraph 3 EPC shall draw up a business distribution scheme for all points of law that shall be referred during the year.
     The scheme may be amended during the working year.

(2) In proceedings before the Enlarged Board of Appeal at least four of the members shall not have taken part in the
    proceedings before the Board of Appeal referring the point of law.

Article 2
Replacement of members
(1) Reasons for replacement by alternates shall in particular include sickness, excessive workload, and commitments which
     cannot be avoided.

(2) Any member who wishes to be replaced by an alternate shall inform the Chairman of the Board of his unavailability
    without delay.

Article 3
Exclusion and objection
(1) If the Board has knowledge of a possible reason for exclusion or objection which does not originate from a member
     himself or from any party to the proceedings, then the procedure of Article 24, paragraph 4, of the Convention shall be
     applied.

(2) The member concerned shall be invited to present his comments as to whether there is a reason for exclusion.

(3) Before a decision is taken on the exclusion of the member, there shall be no further proceedings in the case.

Article 4
Rapporteurs
(1) The Chairman of the Board shall for each point of law designate a member of the Board, or himself, as rapporteur. The
     Chairman may appoint an additional rapporteur.

(2) If an additional rapporteur is appointed, the steps referred to in paragraphs 3 to 5 shall be taken by the rapporteur and
    additional rapporteur jointly unless the Chairman directs otherwise.

(3) The rapporteur shall carry out a preliminary study of the point of law and may prepare communications to the parties
    subject to the direction of the Chairman of the Board. Communications shall be signed by the rapporteur on behalf of the
    Board.

(4) The rapporteur shall make the preparations for meetings of the Board and for oral proceedings.

(5) The rapporteur shall draft decisions.

(6) If a rapporteur or additional rapporteur considers that his knowledge of the language of the proceedings is insufficient for
    drafting communications or decisions, he may draft these in one of the other official languages. His drafts shall be
    translated by the European Patent Office into the language of the proceedings and the translations shall be checked by
    the rapporteur or by another member of the Board.



1
    Amendment adopted by decision of the Enlarged Board of Appeal of 28 October 2002 and approved by decision of the Administrative Council of 12
    December 2002 (OJ EPO 2003, 58).




                                                                                                                                                    9
Article 23(4) – OJ 2003, 58



Article 5
Registry
(1) A Registry shall be established for the Enlarged Board of Appeal. The Senior Registrar of the Boards of Appeal shall be
     responsible for the discharge of its functions.

(2)1 The members of the Enlarged Board of Appeal appointed under Article 11 paragraph 3 EPC may entrust to the Senior
     Registrar tasks which involve no technical or legal difficulties, in particular in relation to arranging for inspection of files,
     issuing summonses to oral proceedings and notifications and granting requests for further processing of applications.

(3) Minutes of oral proceedings and of the taking of evidence shall be drawn up by the Senior Registrar or such other
    employee of the Office as the Chairman may designate.

Article 6
Attendance of interpreters
If required, the Chairman of the Board shall make arrangements for interpreting during oral proceedings, the taking of
evidence or the deliberations of the Board.

Article 7
Change in the composition of the Board
(1) If the composition of the Board is changed after oral proceedings, the parties to the proceedings shall be informed that,
     at the request of any party, fresh oral proceedings shall be held before the Board in its new composition. Fresh oral
     proceedings shall also be held if so requested by the new member and if the other members of the Board have given
     their agreement.

(2) The new member shall be bound to the same extent as the other members by an interim decision which has already
    been taken.

(3) If, when the Board has already reached a final decision, a member is unable to act, he shall not be replaced by an
    alternate. If the Chairman is unable to act, the legally qualified member of the Board having the longest service on the
    Board or, in the case where members have the same length of service, the eldest member shall sign the decision on
    behalf of the Chairman.

Article 8
Consolidation of points of law
If two or more points of law have been submitted with the same or similar subject-matter, the Board may consider them in
consolidated proceedings.

Article 9
Oral proceedings
(1) If oral proceedings are to take place, the Board shall endeavour to ensure that the parties have provided all relevant
     information and documents before the hearing.

(2)1 The Board may send a communication drawing attention to matters which seem to be of special significance, or to the
     fact that questions appear no longer to be contentious, or containing other observations that may help concentration on
     essentials during the oral proceedings.

(3)1 A change of date for oral proceedings may exceptionally be allowed in the Board's discretion following receipt of a
     written and reasoned request made as far in advance of the appointed date as possible and copied to any other parties
     who shall as promptly as possible inform the Board whether or not they agree.

(4)1 The Board shall not be obliged to delay any step in the proceedings, including its decision, by reason only of the
     absence at the oral proceedings of any party duly summoned who may then be treated as relying only on its written
     case.

(5)1 The Chairman presides over the oral proceedings and ensures their fair, orderly and efficient conduct.




1
     Amendment adopted by decision of the Enlarged Board of Appeal of 28 October 2002 and approved by decision of the Administrative Council of 12
     December 2002 (OJ EPO 2003, 58).




10
                                                                                                                  Article 23(4) – OJ 2003, 58



   1
(6) When a case is ready for decision during oral proceedings, the Chairman shall state the final requests of the parties and
     declare the debate closed. No submissions may be made by the parties after the closure of the debate unless the Board
     decides to re-open the debate.

(7)1 The Board shall ensure that each case is ready for decision at the conclusion of the oral proceedings, unless there are
     special reasons to the contrary. Before the oral proceedings are closed, the Board's decision may be announced orally
     by the Chairman.

Article 10
Communications to the parties
If the Board deems it expedient to communicate with the parties regarding a possible appreciation of substantive or legal
matters, such communication shall be made in such a way as not to imply that the Board is in any way bound by it.

Article 11
Deliberations preceding decisions
Only members of the Board shall participate in deliberations; the Chairman may, however, authorise other officers to attend.
Deliberations shall be secret.

Article 11a
EPO President's right to comment
The Board may, on its own initiative or at the written, reasoned request of the President of the European Patent Office, invite
him to comment in writing or orally on questions of general interest which arise in the course of proceedings pending before it.
The parties shall be entitled to submit their observations on the President's comments

Article 11b
Statements by third parties
(1) In the course of proceedings before the Board, any written statement concerning the points of law raised in such
     proceedings which is sent to this Board by a third party may be dealt with as the Board thinks fit.

(2) The Board may announce further provisions concerning such statements in the Official Journal of the European Patent
    Office if it seems appropriate.

Article 12
Order of voting
(1) During the deliberations between members of the Board, the opinion of the rapporteur shall be heard first, followed by
     that of the additional rapporteur if one has been appointed and, if the rapporteur is not the Chairman, the Chairman's
     last.

(2) If voting is necessary, votes shall be taken in the same sequence; even if the Chairman is the rapporteur, he shall vote
    last. Abstentions shall not be permitted.

Article 12a
Reasons for the decision
The decision of the Board shall be in accordance with the votes of the majority of its members. If a majority of the members of
the Board agrees, the reasons for such decision may also indicate the opinions held by a minority of the members.

Neither the decision nor its reasons may indicate either the names of the members forming any such minority or the size of
such minority.

Article 13
Opinions on points of law
The foregoing provisions shall apply mutatis mutandis to opinions on points of law referred to the Board by the President of
the EPO pursuant to Article 112 (1) (b) of the Convention.

Article 14
Binding nature of the Rules of Procedure
These Rules of Procedure shall be binding upon the Enlarged Board of Appeal, provided that they do not lead to a situation
which would be incompatible with the spirit and purpose of the Convention.


1
    Amendment adopted by decision of the Enlarged Board of Appeal of 28 October 2002 and approved by decision of the Administrative Council of 12
    December 2002 (OJ EPO 2003, 58).




                                                                                                                                                    11
Article 23(4) – OJ 2003, 61



Article 152
Entry into force
These Rules of Procedure shall enter into force on the date on which they are approved by the Administrative Council of the
European Patent Organisation.


                                                                                                                                                      Article 23(4) – OJ 2003, 61




Decision of the Administrative Council of 12 December 2002
approving amendments to the Rules of Procedure of the
Boards of Appeal of the European Patent Office

OJ 2003, 61
THE ADMINISTRATIVE COUNCIL OF THE EUROPEAN PATENT ORGANISATION,

Having regard to the European Patent Convention, and in particular Article 23, paragraph 4, thereof,
Having regard to the amendments to the Rules of Procedure of the Boards of Appeal, adopted on 28 October 2002 under
Rule 10, paragraph 3, of the Implementing Regulations to the European Patent Convention,

HAS DECIDED AS FOLLOWS:

Article 1
The amendments to the Rules of Procedure of the Boards of Appeal as shown in the Annex to this decision, are hereby
approved.

Article 2
This decision shall enter into force on 1 May 2003.
Done at Munich, 12 December 2002
For the Administrative Council
The Chairman
Roland GROSSENBACHER




2
     The amendments adopted by the Enlarged Board of Appeal on 28 October 2002 enter into force on 1 May 2003 (see Article 2 of the decision of the
     Enlarged Board of Appeal together with Article 2 of the decision of the Administrative Council of 12 December 2002; OJ EPO 2003, 58).




12
                                                                                                               Article 23(4) – OJ 2004, 541



                                                                                                                                               Article 23(4) – OJ 2004, 541




RULES OF PROCEDURE OF THE BOARDS OF APPEAL

OJ 2004, 541

Version consolidating the amendments published in
OJ EPO 1983, 7; OJ EPO 1989, 361; OJ EPO 2000, 316, OJ EPO
2003, 61, OJ EPO 2003, 89 and OJ 2004, 541
Article 1
Business distribution scheme
   1
(1) The Presidium referred to in Rule 10, paragraph 4 EPC, shall before the beginning of each working year draw up a
     scheme for the distribution among the Boards of Appeal of all appeals that may be filed during the year, designating the
     members who may serve on each Board and their respective alternates. The scheme may be amended during the
     working year.

(2) The Presidium may delegate to the Chairman of each Board the task of designating members responsible for the
    examination of each appeal assigned to his Board as and when it is received by the Registry of the Boards of Appeal.

Article 2
Replacement of members and chairmen
(1) Reasons for replacement by alternates shall in particular include sickness, excessive workload, and commitments which
     cannot be avoided.

(2) Any member requesting to be replaced by an alternate shall inform the Chairman of the Board concerned of his
    unavailability without delay.

(3) The chairman of each Board may designate another member of the Board to replace him or her as chairman in a
    particular appeal, taking due account of the business distribution scheme.

Article 3
Exclusion and objection
(1) If a Board has knowledge of a possible reason for exclusion or objection which does not originate from a member
     himself or from any party to the proceedings, then the procedure of Article 24, paragraph 4, of the Convention shall be
     applied.

(2) The member concerned shall be invited to present his comments as to whether there is a reason for exclusion.

(3) Before a decision is taken on the exclusion of the member, there shall be no further proceedings in the case.

Article 3a1
Procedural compliance
(1) The Chairman shall for each appeal designate a member of the Board or himself to consider the admissibility of the
     appeal.

(2) The Chairman or a member designated by him shall ensure that the parties comply with these Rules and with directions
    of the Board and shall propose action to be taken as appropriate.

Article 4
Rapporteurs
(1) The Chairman of each Board shall for each appeal designate a member of his Board, or himself, as rapporteur. If
     appropriate in the light of the subject-matter of the case, the Chairman may designate an additional rapporteur.

(2) The rapporteur shall carry out a preliminary study of the appeal and may prepare communications to the parties subject
    to the direction of the Chairman of the Board. Communications shall be signed by the rapporteur on behalf of the Board.
1
    Amendment adopted by decision of the Presidium of 28 October 2002 and approved by decision of the Administrative Council of 12 December 2002
    (OJ EPO 2003, 60).




                                                                                                                                                     13
Article 23(4) – OJ 2004, 541




(3) The rapporteur shall make the preparations for meetings of the Board and for oral proceedings.

(4) The rapporteur shall draft decisions.

(5) If a rapporteur considers that his knowledge of the language of the proceedings is insufficient for drafting
    communications or decisions, he may draft these in one of the other official languages. His drafts shall be translated by
    the European Patent Office into the language of the proceedings and the translations shall be checked by the rapporteur
    or by another member of the Board concerned.

Article 5
Registries
(1) Registries shall be established for the Boards of Appeal. Registrars shall be responsible for the discharge of the
     functions of the Registries. One of the Registrars shall be designated Senior Registrar.

(2)1 The Presidium referred to in Rule 10, paragraph 1 EPC may entrust to the Registrars the execution of functions which
     involve no technical or legal difficulties, in particular in relation to arranging for inspection of files, issuing summonses to
     oral proceedings and notifications and granting requests for further processing of applications.

(3) The Registrar shall report to the Chairman of the Board concerned on the admissibility of each newly filed appeal.

(4) Minutes of oral proceedings and of the taking of evidence shall be drawn up by the Registrar or such other employee of
    the Office as the Chairman may designate.

Article 6
Attendance of interpreters
If required, the Chairman of any Board shall make arrangements for interpretation during oral proceedings, the taking of
evidence or the deliberations of his Board.

Article 7
Change in the composition of a Board
(1) If the composition of a Board is changed after oral proceedings, the parties to the proceedings shall be informed that, at
     the request of any party, fresh oral proceedings shall be held before the Board in its new composition. Fresh oral
     proceedings shall also be held if so requested by the new member and if the other members of the Board concerned
     have given their agreement.

(2) The new member shall be bound to the same extent as the other members by an interim decision which has already
    been taken.

(3) If, when a Board has already reached a final decision, a member is unable to act, he shall not be replaced by an
    alternate. If the Chairman is unable to act, the member of the Board concerned having the longer or longest service on
    the Boards of Appeal, or in the case where members have the same length of service, the elder or eldest member, shall
    sign the decision on behalf of the Chairman.

Article 8
Enlargement of a Board of Appeal
If a Board of Appeal consisting of two technically qualified members and one legally qualified member considers that the
nature of the appeal requires that the Board should consist of three technically qualified members and two legally qualified
members, the decision to enlarge the Board shall be taken at the earliest possible stage in the examination of that appeal.

Article 9
Consolidation of appeal proceedings
(1) If several appeals are filed from a decision, these appeals shall be considered in the same proceedings.

(2) If appeals are filed from separate decisions and all the appeals are designated to be examined by one Board in a
    common composition, that Board may deal with those appeals in consolidated proceedings with the consent of the
    parties.




1
     Amendment adopted by decision of the Presidium of 28 October 2002 and approved by decision of the Administrative Council of 12 December 2002
     (OJ EPO 2003, 60).




14
                                                                                                               Article 23(4) – OJ 2004, 541



Article 10
Remission to the department of first instance
A Board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance
proceedings, unless special reasons present themselves for doing otherwise.

Article 10a1
Basis of Proceedings
(1) Appeal proceedings shall be based on

     (a)        the notice of appeal and statement of grounds of appeal filed pursuant to Article 108 EPC;

     (b)        in cases where there is more than one party, any written reply of the other party or parties to be filed within four
                months of notification of the grounds of appeal;

     (c)        any communication sent by the Board and any answer thereto filed pursuant to directions of the Board.

(2)2 The statement of grounds of appeal and the reply shall contain a party's complete case. They shall set out clearly and
     concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should
     specify expressly all the facts, arguments and evidence relied on. All documents referred to shall be

     (a)        attached as annexes insofar as they have not already been filed in the course of the grant, opposition or appeal
                proceedings or produced by the Office in said proceedings;

     (b)        filed in any event to the extent that the Board so directs in a particular case.

(3) Subject to Articles 113 and 116 EPC the Board may decide the case at any time after filing of the statement of grounds
    of appeal or, in cases where there is more than one party, after the expiry of the time limit in (1)(b).

(4) Without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which could have been
    presented or were not admitted in the first instance proceedings, everything presented by the parties under (1) shall be
    taken into account by the Board if and to the extent it relates to the case under appeal and meets the requirements in
    (2).

(5) Extension of time limits may exceptionally be allowed in the Board's discretion following receipt of a written and
    reasoned request.

Article 10b1
Amendment to a party's case
(1) Any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted and considered at the
     Board's discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject matter
     submitted, the current state of the proceedings and the need for procedural economy.

(2) Other parties shall be entitled to submit their observations on any amendment not held inadmissible by the Board ex
    officio.

(3) Amendments sought to be made after oral proceedings have been arranged shall not be admitted if they raise issues
    which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the oral
    proceedings.

Article 10c1
Interventions
Articles 10a and 10b shall apply mutatis mutandis to interventions commenced while an appeal is pending.
            1
Article 11
Oral Proceedings
(1) If oral proceedings are to take place, the Board may send a communication drawing attention to matters which seem to
     be of special significance, or to the fact that questions appear no longer to be contentious, or containing other
     observations that may help concentration on essentials during the oral proceedings.


1
    Amendment adopted by decision of the Presidium of 28 October 2002 and approved by decision of the Administrative Council of 12 December 2002
    (OJ EPO 2003, 60).
2
    Amendment adopted by decision of the Administrative Council of 29 October 2004 (OJ EPO 2004, 541) with effect from 1 January 2005.




                                                                                                                                               15
Article 23(4) – OJ 2004, 541




(2) A change of date for oral proceedings may exceptionally be allowed in the Board's discretion following receipt of a
    written and reasoned request made as far in advance of the appointed date as possible and copied to any other parties
    who shall as promptly as possible inform the Board whether or not they agree.

(3) The Board shall not be obliged to delay any step in the proceedings, including its decision, by reason only of the
    absence at the oral proceedings of any party duly summoned who may then be treated as relying only on its written
    case.

(4) The Chairman presides over the oral proceedings and ensures their fair, orderly and efficient conduct.

(5) When a case is ready for decision during oral proceedings, the Chairman shall state the final requests of the parties and
    declare the debate closed. No submissions may be made by the parties after the closure of the debate unless the Board
    decides to re-open the debate.

(6) The Board shall ensure that each case is ready for decision at the conclusion of the oral proceedings, unless there are
    special reasons to the contrary. Before the oral proceedings are closed, the decision may be announced orally by the
    Chairman.

Article 11a1
Costs
(1) Subject to Article 104(1) EPC, the Board may on request order a party to pay some or all of another party's costs which
     shall, without limiting the Board's discretion, include those incurred by any

      (a)     amendment pursuant to Article 10b to a party's case as filed pursuant to Article 10a(1);

      (b)     extension of a time limit;

      (c)     acts or omissions prejudicing the timely and efficient conduct of oral proceedings;

      (d)     failure to comply with a direction of the Board;

      (e)     abuse of procedure.

(2) The costs ordered to be paid may be all or part of those incurred by the receiving party and may inter alia be expressed
    as a percentage or as a specific sum. In the latter event, the Board's decision shall be a final decision for the purposes of
    Article 104(3) EPC. The costs ordered may include costs charged to a party by its professional representative, costs
    incurred by a party itself whether or not acting through a professional representative, and the costs of witnesses or
    experts paid by a party but shall be limited to costs necessarily and reasonably incurred.

Article 12
Communications to the parties
(1)1 In the written phase of proceedings, replies to requests and directions on matters of procedure shall be given by means
     of communications.

(2)1 If a Board deems it expedient to communicate with the parties regarding a possible appreciation of substantive or legal
     matters, such communication shall be made in such a way as not to imply that the Board is in any way bound by it.

Article 12a
The Board may, on its own initiative or at the written, reasoned request of the President of the European Patent Office, invite
him to comment in writing or orally on questions of general interest which arise in the course of proceedings pending before it.
The parties shall be entitled to submit their observations on the President's comments.

Article 13
Deliberations preceding decisions
If the members of a Board are not all of the same opinion, the Board shall meet to deliberate regarding the decision to be
taken. Only members of the Board shall participate in the deliberations; the Chairman may, however, authorise other officers
to attend. Deliberations shall be secret.




1
     Amendment adopted by decision of the Presidium of 28 October 2002 and approved by decision of the Administrative Council of 12 December 2002
     (OJ EPO 2003, 60).




16
                                                                                                                     Article 23(4) – OJ 2004, 541



Article 14
Order of voting
(1) During the deliberations of members of a Board, the opinion of the rapporteur shall be heard first, followed by that of the
     additional rapporteur if one has been appointed and, if the rapporteur is not the Chairman, the Chairman's last.

(2) If voting is necessary, votes shall be taken in the same sequence, save that if the Chairman is also the rapporteur, he
    shall vote last. Abstentions shall not be permitted.

Article 15
Deviations from an earlier decision of any Board or from the Guidelines
(1) Should a Board consider it necessary to deviate from an interpretation or explanation of the Convention given in an
     earlier decision of any Board, the grounds for this deviation shall be given, unless such grounds are in accordance with
     an earlier opinion or decision of the Enlarged Board of Appeal. The President of the European Patent Office shall be
     informed of the Board's decision.

(2) If, in its decision, a Board gives a different interpretation of the Convention to that provided for in the Guidelines, it shall
    state the grounds for its action if it considers that this decision will be more readily understood in the light of such
    grounds.

Article 16
Deviation from an earlier decision or opinion of the Enlarged Board of Appeal
Should a Board consider it necessary to deviate from an interpretation or explanation of the Convention contained in an
earlier opinion or decision of the Enlarged Board of Appeal, the question shall be referred to the Enlarged Board of Appeal.

Article 17
Referral of a question to the Enlarged Board of Appeal
(1) If a point is to be referred to the Enlarged Board of Appeal, a decision to this effect shall be taken by the Board
     concerned.

(2) The decision shall contain the items specified in Rule 66, paragraph 2(a), (b), (c), (d) and (f) and the point which the
    Board refers to the Enlarged Board of Appeal. The context in which the point originated shall also be stated.

(3) The decision shall be communicated to the parties.

Article 18
Binding nature of the Rules of Procedure
These Rules of Procedure shall be binding upon the Boards of Appeal, provided that they do not lead to a situation which
would be incompatible with the spirit and purpose of the Convention.

Article 193
Entry into force
These Rules of Procedure shall enter into force on the date on which they are approved by the Administrative Council of the
European Patent Organisation. Simultaneously with their entry into force, the Rules of Procedure of the Legal Board of
Appeal, adopted by the authority referred to in Rule 10, paragraph 2, on 27 April 1978, and approved by the Administrative
Council of the European Patent Organisation by a Decision of 3 June 1978, shall cease to have effect.

Done at The Hague, 4 June 1980
For the authority referred to in Rule 10, paragraph 2
The Chairman
J.B. van Benthem




3
    The amendments adopted by the Presidium on 28 October 2002 enter into force on 1 May 2003 (see Article 3 of the decision of the Presidium
    together with Article 2 of the decision of the Administrative Council of 12 December 2002). Pursuant to Article 2 of the decision of the Presidium,
    Articles 10a, 10b, 10c and 11a(1)(a) only apply to proceedings in which the notice of appeal was received by the European Patent Office after the date
    of the entry into force of these amendments (see OJ EPO 2003, 60).




                                                                                                                                                       17
Article 23(4) – OJ 1985, 249



                                                                                                                          Article 23(4) – OJ 1985, 249




Decision of the Presidential Council of the Boards of Appeal
dated 31 May 1985 concerning the transfer of functions to the
Registrars of the Boards of Appeal

OJ 1985, 249
as amended OJ 2002, 590
The authority referred to in Rule 10(2) of the Implementing Regulations to the European Patent Convention - Having regard to
Article 5 of the rules of Procedure of the Boards of Appeal - has decided as follows:

Article 1
Transfer of functions
(1) Pursuant to Article 5(2) of the Rules of Procedure of the Boards of Appeal, the execution of the functions set out in
     Article 2 shall be entrusted to the Registrars of the Boards of Appeal.

(2) The transfer to a Registrar of the execution of a function falling to a Board of Appeal shall not prejudice the competence
    of the Board to take decisions itself.

Article 2
Transferred functions
The execution of the following functions shall be entrusted to the Registrars of the Boards of Appeal:

(1) Notification of the appellant that the appeal does not comply with the provisions or Rule 64(a) EPC and invitation to
    remedy the deficiencies noted (Rule 65(2) EPC);

(2) Notification of the appellant that the appeal will probably be rejected as inadmissible under Rule 65(1) EPC;

(3) Referral of requests for inspection of files to the applicant for comment under Article 128(1) EPC and granting inspection
    where he gives his consent;

(4) Conducting the file inspection procedure as instructed by the Board where Article 128(2) EPC applies;

(5) Granting inspection of files where Article 128(3) and (4) EPC applies;

(6) Communication of information contained in the files under Rule 59 EPC;

(7) Issuing priority documents;

(8) Summoning to oral proceedings under Rule 71(1) EPC when directed by the Chairman;

(9) Summoning to give evidence under Rule 72(2) EPC when directed by the Chairman;

(10) Notification of loss of rights under Rule 69(1) EPC and communication of information as to possible legal remedies
     therefore (re-establishment of rights, further processing);

(11) Notification of the person concerned under the final part of the second sentence in Rule 69(2) EPC;

(12) Setting the time limit for filing the reply to the statement of the grounds of appeal;

(13) Notification that the Board has decided to extend a time limit under Rule 84 EPC;

(14) Granting of requests for further processing (Article 121 EPC);

(15) Requesting parties to file in a sufficient number of copes documents that have to be communicated to other persons
     (Rule 36(4) EPC);

(16) Communication of documents to the other parties to the proceedings;



18
                                                                                                                    Article 23(4) – OJ 2003, 419




(17) Inviting parties to sign unsigned documents and laying down a time limit for doing so (Rule 36(3) EPC);

(18) Examining whether a representative has been appointed in the prescribed manner, and examining authorisations and
     related communications as directed by the Chairman of the Board;

(19) deleted1

(20) Notification of the opponent that the patent has been surrendered of has lapsed (Rule 60(1) EPC);

(21) Issuing instructions for fees to be refunded in cases in which no order by a Board of Appeal to that effect is required;

(22) Preparative preliminary actions aiming at a decision ordering the revocation of a European patent on grounds of an
     express or implied declaration by the proprietor of the patent that he does not agree with any version of the text.

Article 3
This Decision shall enter into force on 1 July 1985.

Done at Munich, 31 May 1985.
For the authority referred to in Rule 10, paragraph 2,
The Chairman
Paul Braendli


                                                                                                                                                     Article 23(4) – OJ 2003, 419




Guidance for parties to appeal proceedings and their
representatives1

OJ 2003, 419
(edited by the Legal Research Service of the Boards of Appeal)

Preliminary remarks

These notes should be seen as a working tool intended to assist parties in proceedings before the Boards of Appeal.
However, these notes are intended neither to lay down legal Rules in themselves nor to override the relevant provisions in
force.

Relevant information is also available from the following publications

- Ancillary Regulations to the European Patent Convention 2003, which include the Rules of Procedure of the Boards of
Appeal (OJ EPO 2003, 61) (RPBA)

- Case law of the Boards of Appeal of the European Patent Office (4th edition, 2001)

- Annual EPO Board of Appeal case law reports (annual special edition of the Official Journal of the European Patent Office).

Queries should be addressed to the head of the Boards of Appeal Registry, European Patent Office, Erhardtstrasse 27, D-
80331 Munich (Tel. (+49-89)2399-3010;

Fax (+49-89)2399-4465).



1
    Deleted according the decision of the Presidential Council of the Boards of Appeal dated July 15, 2002, OJ EPO 2002, 590.
1
    These notes for parties to appeal proceedings and their representatives as edited by the Legal Research Service of the Boards of Appeal replace the
    previous versions (see OJ EPO 1981, 176; 1984, 376; 1989, 395; 1996, 342).




                                                                                                                                                           19
Article 23(4) – OJ 2003, 419




1. Filing an appeal and reply

1.1 Decisions subject to appeal

The appeal must be against a decision of the Receiving Section, an examining division, an opposition division or the Legal
Division (Art. 106(1), first sentence, EPC).

Interlocutory decisions which do not terminate proceedings as regards one of the parties can only be appealed if the decision
allows separate appeal (Art. 106(3) EPC).

1.2 Entitlement to appeal

Any party to proceedings adversely affected2 by a decision may appeal. Any other parties to the proceedings shall be parties
as of right (Art. 107 EPC).

1.3 Transfer of party status

A party to proceedings may change, provided the succession in title is documented for the EPO (R. 20 EPC, R. 61 EPC, R.
66 EPC).

It is not necessary for the other party to agree to the change. The previous party to the proceedings retains its rights and
obligations until the transfer has been documented3.

Party status is transferable at any stage during pending appeal proceedings if transferred together with the business assets or
the assets in whose interests the appeal has been filed4.

1.4 Appeal period, appeal fee

The appeal must be lodged with the EPO in the form of a notice of appeal within two months5 of the date of notification of
the decision appealed from6. The time limit cannot be extended. The decisive date in assessing whether the time limit has
been adhered to is the date of receipt of the notice of appeal by the EPO.

The notice of appeal is not deemed to have been filed until after the appeal fee has been paid within the two-month appeal
period (Art. 108, second sentence, EPC)7.

1.5 Form of the appeal

Art. 108 EPC requires that the notice of appeal and the statement of grounds of appeal be filed in writing. They may also be
filed by telex, telegram or fax (see R. 36(5) EPC)8. The Registry will request written confirmation if the quality of the
document filed is deficient. E-mail has no legal force in proceedings under either the EPC or PCT and thus cannot be used
validly to perform any procedural act and in particular to comply with time limits9.

1.6 Language

An appeal may be filed in any official language of the EPO (English, French, German) (R. 1(1), first sentence, EPC).

Appellants from contracting states having a language other than English, French or German as an official language, and
nationals of these states who are resident abroad (Art. 14(2), first sentence, EPC) are entitled to a reduction in the appeal




2
     See Case Law of the Boards of Appeal of the European Patent Office, VII-D-7.3.2.
3
     See T 870/92.
4
     See T 659/92.
5
     Concerning time limits see R. 83 to 85b EPC.
6
     See Art. 108, first sentence, EPC, R. 77 - 82 EPC, Announcement by the President of the EPO of 11 January 1980 concerning public notification under
     R. 80 EPC (OJ EPO 1980, 36).
7
     Concerning the payment see RFees, in particular Art. 5 and 8, as published in OJ EPO 2002, 58, and the Guidance for the payment of fees, costs and
     prices in OJ EPO 2002, 559.
8
     Details on supplying written confirmation and on other matters relating to the use of technical means of communication for filing documents (eg signing
     of documents and establishing the date of receipt) are set out in the decisions of the President of the European Patent Office dated 26 May 1992 (OJ
     EPO 1992, 299) and 2 June 1992 (OJ EPO 1992, 306).
9
     See Notice dated 2 June 1999 (OJ EPO 1999, 509) and Notice dated 12 September 2000 (OJ EPO 2000, 458) with further details concerning e-mail
     correspondence with the Office.




20
                                                                                                                      Article 23(4) – OJ 2003, 419




fee of 20% if they file at least the notice of appeal - the essential document at the first stage in appeal proceedings - in that
language (R. 6(3) EPC in conjunction with Art. 12(1) RFees).10

The translation required under Art. 14(4) EPC may be filed in any official language of the EPO. Where appropriate, the one-
month time limit for filing the translation may be extended to the end of the appeal period (R. 6(2) EPC). If the translation
is not filed in due time, under Art. 14(5) EPC the notice of appeal is deemed not to have been received.

1.7 Filing office, registration

In order to expedite the procedure it is recommended that appeals be sent to the filing office at the European Patent Office,
D-80298 Munich11,12. Urgent faxes should only be addressed to (+49-89) 2399-3014. Attention is also drawn to the possibility
of using the automatic night letter-box.13

The Registry gives each appeal a separate reference number which is to be used in all correspondence with the Board and
the Registry throughout the appeal proceedings.

1.8 Content of the notice of appeal

The content of the notice of appeal referred to in Art. 108, first sentence, EPC is laid down in R. 64 EPC. The notice of appeal
must contain the name and address of the appellant in accordance with the provisions of R. 26(2)(c) EPC and a statement
identifying the decision contested and the extent to which amendment or cancellation of the decision is requested.

1.9 Statement of grounds of appeal

A statement of grounds of appeal must be filed in writing within four months the date of notification of the decision
appealed from (Art. 108, third sentence, EPC). The statement of grounds may also be filed by telex, telegram or fax (see
1.5).

1.10 Binding time limits, re-establishment of rights

The time limits for filing the notice of appeal, paying the appeal fee and filing the statement of grounds may not be extended.
Under the conditions laid down in Art. 122 EPC, however, the applicant or proprietor of a European patent who, in spite of
all due care required by the circumstances having been taken, was unable to observe a time limit, may apply for a re-
establishment of rights (restitutio in integrum). The opponent may not apply for re-establishment of rights with respect to the
two-month appeal period, but re-establishment under Art. 122 EPC is possible where the opponent has failed to observe the
four-month time limit for filing the statement of grounds of appeal.14

1.11 Reply

Under Art. 107, second sentence, EPC, any other parties to the proceedings who are not adversely affected by the contested
decision or who have not lodged an appeal are also parties to the appeal proceedings as of right. They do not however have
any independent right to continue the proceedings.

Parties to the proceedings under Art. 107, second sentence, EPC are asked by the Registry whether or not they wish to
receive any further communications in connection with the appeal proceedings. Their declaration that they wish so may be
revoked at any time.

In inter partes proceedings, any party wishing to contest the appeal in whole or in part should file a reply within four months of
notification to it of the grounds of appeal (Art. 10a(1)(b) RPBA).

1.12 Intervention

Third parties may intervene in appeal proceedings under Art. 105 EPC as long as appeal proceedings are still pending.



10
     See also G 6/91, OJ EPO 1992, 491.
11
     Notice from the European Patent Office dated 2 June 1992, OJ EPO 1992, 306, and Notice dated 18 June 2002 OJ EPO 2002, 374).
12
     The Vienna sub-office is not a filing office for the purposes of Art. 75(1)(a) EPC (Notice from the European Patent Office dated 4 March 1992, OJ EPO
     1992, 183).
13
     Munich main building, Erhardtstrasse, by the barrier on the Corneliusstrasse (see notice in OJ EPO 1987, 38); PschorrHöfe building, at the entrance at
     Zollstrasse 3 (see notice in OJ EPO 1991, 577).
14
     See G 1/86, OJ EPO 1987, 447.




                                                                                                                                                        21
Article 23(4) – OJ 2003, 419




2. Written proceedings

Parties should develop their arguments in writing and not reserve them for a possible oral hearing.

2.1 Content of the statement of grounds and reply

The statement of grounds or reply must contain respectively an appellant's or respondent's complete case. This should
include, in clear and concise terms, why the decision under appeal is contested or supported. Any and all facts, arguments
and evidence relied on and all requests made must be expressly set out or, if previously advanced in first instance
proceedings, incorporated by specific reference (eg document, date, page and paragraph number) to those proceedings. Any
documents, of whatever nature, relied on must be annexed to the grounds of appeal or reply unless, for some special reason
(eg exceptional length), the Board allows an exception (Art. 10a(2) RPBA).

2.2 Quotations and references

Quotations from the decision under appeal, the European Patent Convention, the Implementing Regulations, the Rules of
Procedure of the Boards of Appeal, the Guidelines for Examination, the patent or the patent application in suit or any other
document contained in the file of the case should only be made if, and if made, only to the extent that this is necessary to the
development of the argument.

If reference is made to international treaties (other than the European Patent Convention, the Patent Cooperation Treaty and
the Paris Convention), national law (other than the patent laws of the contracting states) or the judgment of any national or
international court, a complete copy of the treaty, law or judgment in question should be provided unless the Board concerned
agrees that extracts will be sufficient.

2.3 Evidence

If evidence is submitted, the facts it is intended to elucidate should be indicated.

Documents intended for use as evidence before the EPO - in particular publications - may be filed in any language. The EPO
may however require that a translation be filed, within a given time limit of not less than one month, in one of the EPO's
official languages (R. 1(3) EPC).

If the evidence is not in documentary form, the Board should be notified of the nature of the evidence and the Board's
directions sought before it is submitted (see also 3.7). Evidence by means of witnesses should further state the name and
exact address of witnesses.

2.4 Submission of documents, samples, models, etc.

The introduction of any new documents into the proceedings should be explained briefly and a legible copy of each such
document should be annexed to the statement of grounds or reply (see 2.1). Graphs, diagrams, photographs, tables of figures
and the like should not be incorporated into the text but placed in an appendix. Where handwritten documents are submitted,
they should be accompanied by typewritten copies.

Any party wishing to submit objects such as models, samples or documents that cannot conveniently be placed in an
appendix should contact the Registry about how best they should be submitted.

2.5 Further written submissions and amendments to a party's case

After receipt of the statement of grounds or the reply or replies of any other parties, the Board will give any necessary
directions for the parties to present further submissions (see Art. 10a(1)c RPBA).

The admission of any amendments to a party's case is a matter for the Board's discretion (see Art. 10b RPBA).

Amendments to a case after oral proceedings have been appointed will not be permitted if the Board or other parties cannot
reasonably deal with them without an adjournment of the oral proceedings (Art. 10b(3) RPBA).

3. Oral proceedings

The case should be ready for decision at the close of oral proceedings (Art. 11(6) RPBA). The Board may, by a
communication (which may be sent with the summons to oral proceedings or at some other point in time), indicate matters



22
                                                                                                                Article 23(4) – OJ 2003, 419




which appear to be significant or no longer contentious or make other observation. The parties involved and their
representatives should therefore be prepared to deal with any problems that may arise during the hearing (see Art. 11(1)
RPBA). A decision may be announced at the end of oral proceedings.

3.1 Fixing a date for oral proceedings

Requests for oral proceedings should be made in the statement of grounds or reply. Parties requesting oral proceedings to
consider individual points only (eg admissibility of the appeal) should make this clear when filing the request. A request for
oral proceedings made before the department of first instance does not also apply to appeal proceedings. A separate request
must therefore be made if a party desires oral proceedings before the Board.

The procedure for fixing a date for oral proceedings is set out in the Notice of the Vice-Presidents Directorates-General 2 and
3 dated 1 September 2000 (OJ EPO 2000, 456). As to possible changes of that date see that Notice and Art. 11(2) RPBA.

3.2 Language

In oral proceedings, derogations from the provisions concerning the language of the proceedings (Art. 14 EPC) can be made
according to R. 2 EPC.

The party has to inform the Registry at least one month before the date set for oral proceedings if they intend to use a
language other than the language of the proceedings at oral proceedings and if it is not making provision for interpreting into
the language of the proceedings. This obligation to give notice also applies if the party concerned has already lawfully used
an alternative language to that of the proceedings in oral proceedings before the department of first instance15.

3.3 Notice of summons, acknowledgment of receipt

The period for issuing the summons to oral proceedings is at least two months unless the parties agree to a shorter period
(R. 71 EPC).

The summons to oral proceedings can be sent with an advice of delivery and accompanied by an internal acknowledgment
of receipt (EPO Form 2936). This should be returned to the Registry without delay in order to ensure that oral proceedings
can be held on the date fixed16.

3.4 Conduct of the oral proceedings

Arguments presented at oral proceedings should be succinct and limited to the points at issue or those raised by the Board.

3.5 Absence of a party

Absence of a party at oral proceedings does not oblige the Board to delay any step in the proceedings, including its decision
(R. 71(2) EPC, Art. 11(3) RPBA). Opinion G 4/92 (OJ EPO 1994, 149), regarding new facts or new evidence presented at oral
proceedings in the absence of a party, is thus no longer applicable. But the presentation of new facts, indeed any amendment
to a party's case, at oral proceedings is also subject to the limitation in Art. 10b(3) RPBA.

3.6 Sound recording devices

At oral proceedings before a Board only EPO employees may bring any kind of sound recording device into the hearing
room17.

3.7 Costs of taking of evidence

The taking of evidence by the EPO may be made conditional upon deposit with it, by the party who requested the evidence to
be taken, of a sum the amount of which shall be fixed by reference to an estimate of the costs (R. 74 EPC).18

3.8 Accompanying persons



15
     See also Communication from the Vice-President Directorate-General 3 of the European Patent Office dated 19 May 1995, OJ EPO 1995, 489.
16
     See Notice in OJ EPO 1991, 577.
17
     See Notice of the Vice-Presidents Directorates-General 2 and 3 dated 25 February 1986, OJ EPO 1986, 63.
18
     See also Compensation and fees payable to witnesses and experts in OJ EPO 1983, 100.




                                                                                                                                               23
Article 23(4) – OJ 2003, 419




During oral proceedings, a person accompanying the professional representative of a party may be allowed to make oral
submissions on specific legal or technical issues on behalf of that party, otherwise than under Art. 117 EPC, in addition to
complete presentation of the party's case by the professional representative. Such oral submissions can only be made with
the permission of and at the discretion of the Board. The criteria to be considered when exercising the discretion are set down
in decision G 4/95 (OJ EPO 1996, 412).

3.9 Mobile phone

The use of mobile phones in the hearing rooms is not permitted; they must be switched off.

4. Representation

4.1 If a party to appeal proceedings is represented (see Art. 133 EPC), the representative must meet the requirements of Art.
134 EPC.

4.2 Professional representatives within the meaning of Art. 134 EPC need only file an authorisation under certain
circumstances, in particular if there is a change of representative and the EPO is not notified of the previous representative's
authorisation having terminated (see R. 100 to 102 EPC).19

5. Costs

5.1 In appeal proceedings each party usually bears its own costs but exceptionally for reasons of equity the Board may order
a different apportionment of costs incurred in the taking of evidence or in oral proceedings (Art. 104 EPC).

5.2 Subject to Art. 104(1) EPC, a Board may order one party to an inter partes appeal to pay some or all of another party's
costs. Under Art. 11a(1) RPBA, such costs may be those incurred by

(a) amendment to a party's case

(b) extension of a time limit

(c) an act or omission which prejudices the timely or efficient conduct of oral proceedings

(d) failure to comply with a direction of the Board

(e) abuse of procedure.

5.3 An apportionment of costs may only be made following a request. While requests should normally be made as early in the
proceedings as possible, requests relating to costs may necessarily only be prompted by matters arising at or towards the
end of an appeal, but a request must in any event be made before the close of oral proceedings (if oral proceedings take
place) or before a decision is issued (if no oral proceedings take place). A party making a request for apportionment of costs
should, in doing so, identify the matters for which it seek costs, the reasons why it has incurred costs as a result and, if it
wants to request the Board to order a specific sum, the amount of costs incurred and produce sufficient information to allow
the Board and the other party or parties to comment on the reasonableness of the costs incurred and to assess whether the
costs claimed fall within those allowable which include

(a) costs charged to a party by its professional representative (for example, in attending oral proceedings on behalf of a party)

(b) costs incurred by a party itself whether or not acting through such a representative (for example, appearing on its own
behalf at oral proceedings or attending oral proceedings to give instructions to its representative)

(c) costs of witnesses or experts paid for by a party.

5.4 Any costs which are the subject of an order for apportionment of costs must be limited to those necessarily and
reasonably incurred (Art. 11a(2) RPBA).



19
     See also Decision of the President of the European Patent Office dated 19 July 1991 on the filing of authorisations (OJ EPO 1991, 489), Notice of the
     President of the European Patent Office dated 20 December 1984 concerning general authorisations (OJ EPO 1985, 42), Communication for the
     European Patent Office concerning the authorisation of an association (OJ EPO 1979, 92), Notice of the President of the European Patent Office dated
     1 August 1986 concerning general authorisations (OJ EPO 1986, 327).




24
                                                                                             Article 23(4) – OJ 2003, 419




6. Accelerated processing before the Boards of Appeal

6.1 According to the notice from the Vice President Directorate General 3 dated 19 May 1998 (OJ EPO 1998, 362), parties
with a legitimate interest, eg when infringement proceedings have been brought or are envisaged, may ask the Boards to deal
with their appeals rapidly.

6.2 Requests for accelerated processing must be submitted to the competent Board either at the beginning of or during
proceedings. They should contain reasons for the urgency together with relevant documents; no particular form is required.




                                                                                                                        25
Article 33 – OJ 1978, 201



                                                                                                                                          Article 33
                                                                                                                          Article 33 – OJ 1978, 201




DECISION of the Administrative Council
of the European Patent Organisation
of 24 February 1978 on the authenticity in the
three languages of the European Patent Office
of the texts of decisions taken by the
Administrative Council

OJ 1978, 201
THE ADMINISTRATIVE COUNCIL OF THE EUROPEAN PATENT ORGANISATION,

HAVING REGARD to the European Patent Convention and in particular Article 14, paragraph 1, thereof,

HAS DECIDED AS FOLLOWS:

Article 1
The texts of the decisions of the Administrative Council of the European Patent Organisation shall be equally authentic in the
three official languages of the European Patent Office.

Article 2
This Decision shall enter into force retroactively on 19 October 1977.
DONE at Munich, 24 February 1978.
For the Administrative Council
The Chairman
Georges Vianès


                                                                                                                          Article 33 – OJ 1996, 596




Notice dated 1 October 1996 concerning the main amendments
to Rules 28 and 28a EPC

OJ 1996, 596
1.   Introduction

     In its decision dated 14 June 1996 (OJ EPO 1996, 390 ff) the Administrative Council amended Rules 28 and 28a EPC
     relating to the deposit and new deposit of biological material for the purposes of the European patent grant procedure
     with effect from 1 October 1996. The most important amendments, together with the main measures which have been or
     will be taken to implement them, are outlined below.

2.   Main amendments to Rule 28 EPC

2.1 Replacement of "micro-organism" by "biological material"

     The word "micro-organism" has been replaced by "biological material" - meaning any material containing genetic
     information and capable of self-reproducing or of being reproduced in a biological system (Rule 28(6)(a) EPC). The




26
                                                                                                   Article 33 – OJ 1996, 596




    amendment thus uses the same terminology as the old and new draft EU directives on the legal protection of
    biotechnological inventions, which has not been controversial.

    The term "micro-organism" as used in previous Rule 28 EPC and the Budapest Treaty is not defined, and was in line
    with the state of industrial microbiology at the time, which was based essentially on the use of bacteria and yeasts.

    Technological advances soon made it necessary to expand the concept to include biological elements which are not
    strictly speaking micro-organisms, to permit sufficient disclosure within the meaning of Article 83 EPC of inventions
    which in themselves are perfectly patentable. Thus the Guidelines for Examination in the EPO (C-IV, 3.5) have already
    been amended to specify that "micro-organism" also covers plasmids and viruses - in line with the practice at numerous
    depositary institutions recognised by the EPO.

    The amendment to Rule 28 EPC allows deposits, supplementing written disclosure of the invention, of types of biological
    material not covered by current EPO practice, eg seeds.

    Although the term "biological material" in principle makes possible the deposit for disclosure purposes of macroscopic or
    multicellular material such as seeds or plants, a deposit's admissibility under Rule 28 EPC

    -     in no way prejudges the deposited matter's patentability under Articles 52 to 57 EPC;

    -     does not deprive EPO departments of their powers to interpret the definition of "biological material" with a view to
          the disclosure requirement of Article 83 EPC;

    -     presupposes that a recognised depositary institution is prepared to accept the deposit of a given type of biological
          material.

2.2 Applicant and depositor not identical (Rule 28(1)(d) EPC)

    Following board of appeal decision T 118/87 (OJ EPO 1991, 474) EPO practice has in principle been to consider the
    requirements of previous Rule 28 to be met only if the applicant and depositor are one and the same (see Guidelines C-
    lI, 6), because consent to the deposited culture being made available to the public in accordance with this rule
    (Rule 28(2), last sentence, EPC) can only be given by the depositor entitled to dispose of it.

    In order to meet applicants' requirements, a sub-paragraph (d) has been added to Rule 28(1) EPC which specifies that
    the biological material may be deposited by a person other than the applicant if the name and address of the
    depositor are stated in the application and a document is submitted satisfying the EPO that the latter has authorised the
    applicant to refer to the deposited biological material in the application and has given his unreserved and irrevocable
    consent to the material being made available to the public in accordance with Rule 28.

    The name and address of the depositor and proof of his consent must be submitted to the EPO within the periods laid
    down in Rule 28(2) EPC. No request for such information is issued by the EPO. Nor may such information be submitted
    after expiry of the relevant time limit (see G 2/93, OJ EPO 1995, 275).

2.3 Extension of the expert option (Rule 28(4) EPC)

    Previous Rule 28(3) EPC limited access to deposited biological material by an expert nominated by the requester only
    until such time as a European patent had been granted or the application had been refused, withdrawn, or deemed to be
    withdrawn. User circles have argued this solution is inadequate where the application does not lead to a patent.

    Rule 28(4) EPC now stipulates that the expert option used by the applicant will apply for twenty years from the date of
    filing if the application has been refused or withdrawn or deemed to be withdrawn. This amendment is also in line
    with the solution opted for in the draft EU directive on the legal protection of biotechnological inventions.

2.4 Certification of requests for issue of a sample after grant of the European patent (Rule 28(7) EPC)

    In recent years, one or two problems have arisen about who - EPO or national offices - is responsible for certification at
    the post-grant stage. Although certification powers pre-grant lie exclusively with the EPO, it is not clear from the wording
    of the old version of Rule 28(7) EPC what the situation is as regards the post-grant period.

    Under Rule 28(3) EPC, a sample is issued only if the requester has undertaken vis-a-vis the applicant or proprietor of
    the patent to observe certain obligations until such time as the application ceases to exist or the European patent has



                                                                                                                             27
Article 33 – OJ 1996, 596




     expired in all designated contracting states. It is therefore up to the EPO to verify the legal status of the application or
     patent, possibly over a long period of time. In addition, extension of the expert option will prolong the period in which
     certification will require verification of status.

     The last sentence of Rule 28(7) EPC now stipulates that after grant of the European patent, the request for issue of a
     sample of the deposited biological material is also to be submitted to the European Patent Office.

3.   Amendments to Rule 28a EPC

     These amendments only involve replacing the word "micro-organism" by "biological material".

4.   Main measures for implementing the amendments

     4.1 The new version of the request for grant form (EPA/EPO/OEB Form 1001 10.96), published in issue No.9/1996
     of the Official Journal (OJ EPO 1996, 524), takes account of the amendments to Rule 28 EPC. These amendments will
     also be incorporated into the next edition of the form for Entry into the regional phase before the EPO as designated
     or elected Office (EPA/EPO/OEB Form 1200).

     4.2 A new version of the forms to be used when requesting samples of the biological material deposited
     (EPA/EPO/OEB 1140/1141/1142) will be published shortly.

     4.3 An updated version of the notice of the EPO dated 18 July 1986 (OJ EPO 1986, 269) concerning European
     patent applications and European patents in which reference is made to micro-organisms will be published in a
     forthcoming issue of the OJ EPO.

     4.4 The Guidelines for Examination in the EPO will be amended at the next revision in order to take account of the
     amendments to Rules 28 and 28a EPC.




28
                                                                                                    Article 39 – OJ 1984, 296



                                                                                                                             Article 39 – OJ 1984, 296




Decision of the Administrative Council of 8 June 1984 on the
proportion of renewal fees for European patents to be remitted
to the European Patent Organisation

OJ 1984, 296
THE ADMINISTRATIVE COUNCIL OF THE EUROPEAN PATENT ORGANISATION

-   having regard to Article 39(1) of the European Patent Convention

-   whereas pursuant to Article 40 of the Convention the amounts of the fees referred to under Article 38 and the proportion
    referred to under Article 39 must be fixed at such a level as to ensure that the revenue in respect thereof is sufficient for
    the budget of the Organisation to be balanced,

-   whereas the financial planning of the Organisation indicates that this objective can be achieved if the proportion referred
    to under Article 39 is fixed at 50% for the long term,

-   and taking into account the division of tasks, provided for in the Convention, between the European Patent Organisation
    and the central industrial property offices,

HAS DECIDED AS FOLLOWS:

The proportion of renewal fees for European patents to be remitted to the European Patent Organisation by the Contracting
States shall be fixed at 50% with effect from 1 January 1985.

Done at Munich, 8 June 1984
For the Administrative Council
The Chairman
I.J.G. DAVIS




                                                                                                                                29
Article 55(1)(b) – OJ 1979, 159 International Exhibitions



                                                                                                                           Article 55(1)(b) – OJ 1979, 159 International Exhibitions




International Exhibitions as referred to in Article 55 EPC

OJ 1979, 159
1. The following list enumerates, for purposes of the application of Article 55(1)(b) EPC, those international exhibitions falling
within the terms of the Convention on international exhibitions signed at Paris on 22 November 1928 and last revised on 30
November 1972 which have been registered so far by the International Exhibition Bureau.

                  Period                           Place                             Theme1

                                                         OJ 1979, 159
                  01.05.-31.10.1982                KNOXVILLE                         Special Exhibition on Energy
                                                   Tennessee, (USA)


                  1.
                       Only the French version of the exhibition themes is the official version.
                                                         OJ 1981, 221
                  14.06.-12.07.1981                PLOVDIV                           Specialised exhibition on
                                                   (Bulgarien)                       "La Chasse" (Hunting)
                  01.05.-31.10.1982                KNOXVILLE                         Specialised exhibition on
                                                   -Tennessee (USA)                  "L´énergie" (Energy)
                  01.05.-11.11.1984                NEW ORLEANS                       Specialised exhibition on "Le
                                                   (USA)                             monde des fleuves L´eau douce,
                                                                                     source de vie" (The World of Rivers
                                                                                     Freshwater, the fount of life)
                  17.03.-16.09.1985                TSUKUBA                           Specialised exhibition on "La
                                                   (Japan)                           maison et son environnement -
                                                                                     Science et Technologie au service
                                                                                     de l´Homme chez lui" (Home and
                                                                                     the Environment - Science and
                                                                                     technology in the service of man in
                                                                                     his home)
                  02.05.-13.10.1988                VANCOUVER                         Specialised exhibition on "Les
                                                   (Canada)                          transports - L´Homme en
                                                                                     mouvement" (Transport - Man on
                                                                                     the Move)




30
                                                 Article 55(1)(b) – OJ 1979, 159 International Exhibitions



                                                              1
Period                         Place                  Theme

                                   OJ 1983, 37
08.04.-10.10.1982              AMSTERDAM              Floriade
                               (NL)
01.05.-31.10.1982              KNOXVILLE              Energy
                               Tennessee (US)
28.04.-09.10.1983              MUNICH                 International Horticultural Exhibition
                               (DE)                   1983
02.05.-21.10.1984              LIVERPOOL              International Garden Festival -
                               (GB)                   Liverpool 1984
12.05.-11.11.1984              NEW ORLEANS            The World of Rivers - Freshwater,
                               Louisiana              the fount of life
                               (US)
17.03.-16.09.1985              TSUKUBA                Home and the Environment -
                               (JP)                   Science and technology in the
                                                      service of man in his home
02.05.-13.10.1986              VANCOUVER              Transport - Man on the Move
                               (CA)

                                   OJ 1984, 51
02.05.-21.10.1984              LIVERPOOL              International Garden Festival -
                               (GB)                   Liverpool 1984
12.05.-11.11.1984              NEW ORLEANS            The World of Rivers - Freshwater,
                               Louisiana (US)         the fount of life
17.03.-16.09.1985              TSUKUBA                Home and the Environment -
                               (JP)                   Science and technology in the
                                                      service of man in his home
02.05.-13.10.1986              VANCOUVER              Transport - Man on the Move
                               (CA)

                                   OJ 1985, 32
                                          2
17.03.-16.09.1985              TSUKUBA                Home and the Environment -
                               (JP)                   Science and technology in the
                                                      service of man in his home
04.11.-30.11.1985              PLOVDIV2               Achievement of the Young
                               (BG)                   Inventors
02.05.-13.10.1986              VANCOUVER2             Transport - Man on the Move
                               (CA)
30.04.-30.10.1988              BRISBANE2              Leisure in the Age of Technology
                               (AU)
17.04.-12.10.1992              SEVILLA3               The Age of Discovery
                               (ES)
01.05.-31.10.1992              CHICAGO3               The Age of Discovery
                               (US)
2.
     Specialised exhibition.
3.
     Universal exhibition.




                                                                                                       31
Article 55(1)(b) – OJ 1979, 159 International Exhibitions



                                                                                1
                Period                         Place                    Theme

                                                   OJ 1986, 43
                02.05.-13.10.1986              VANCOUVER2               Transport - Man in Motion
                                               (CA)
                30.04.-30.10.1988              BRISBANE2                Leisure in the Age of Technology
                                               (AU)
                17.04.-12.10.1992              SEVILLA3                 The Age of Discovery
                                               (ES)
                                                                3
                01.05.-31.10.1992              CHICAGO                  The Age of Discovery
                                               (US)
                2.
                     Specialised exhibition.
                3.
                     Universal exhibition.

                                                   OJ 1987, 86

                12.12.87-25.4.88               MILANO2                  Cities of the World and the Future
                                               (IT)                     of the Metropolis
                                                                    2
                30.04.-30.10.1988              BRISBANE                 Leisure in the Age of Technology
                                               (AU)
                1.4.-30.9.1990                 OSAKA                    International Garden and Greenery
                                               (JP)                     Exhibition
                17.04.-12.10.1992              SEVILLA3                 The Age of Discovery
                                               (ES)
                01.05.-31.10.1992              CHICAGO3                 The Age of Discovery
                                               (US)
                2.
                     Specialised exhibition.
                3.
                     Universal exhibition.

                                                  OJ 1988, 159
                                                        2
                12.12.87-25.4.88               MILANO                   Cities of the World and the Future
                                               (IT)                     of the Metropolis
                                                                    2
                30.04.-30.10.1988              BRISBANE                 Leisure in the Age of Technology
                                               (AU)
                1.4.-30.9.1990                 OSAKA                    International Garden and Greenery
                                               (JP)                     Exhibition
                17.04.-12.10.1992              SEVILLA3                 The Age of Discovery
                                               (ES)
                15.05.-15.08.1992              GENOVA2                  Christopher Columbus:
                                               (IT)                     The Ship and the Sea
                2.
                     Specialised exhibition.
                3.
                     Universal exhibition.

                                                  OJ 1989, 156
                1.4.-30.9.1990                 OSAKA                    International Garden and Greenery
                                               (JP)                     Exhibition
                                                            2
                7.6.-7.7.1991                  PLOVDIV                  Youth Inventiveness for a Peaceful
                                               (BG)                     World
                17.04.-12.10.1992              SEVILLA3                 The Age of Discovery
                                               (ES)
                                                            2
                15.05.-15.08.1992              GENOVA                   Christopher Columbus:
                                               (IT)                     The Ship and the Sea
                2.
                     Specialised exhibition.
                3.
                     Universal exhibition.




32
                                                 Article 55(1)(b) – OJ 1979, 159 International Exhibitions



                                                              1
Period                         Place                  Theme

                                  OJ 1990, 183
1.4.-30.9.1990                 OSAKA                  International Garden and Greenery
                               (JP)                   Exhibition
                                         2
7.6.-7.7.1991                  PLOVDIV                Youth Inventiveness for a Peaceful
                               (BG)                   World
28.11.91-23.02.92              MILANO2                XVIIIth Triennale - Man-made and
                               (IT)                   Natural Environments - Confronting
                                                      the Ecological Challenge
17.04.-12.10.1992              SEVILLA3               The Age of Discovery
                               (ES)
                                         2
15.05.-15.08.1992              GENOVA                 Christopher Columbus:
                               (IT)                   The Ship and the Sea
23.4.-17.10.1993               STUTTGART2             IGA 93 - Horticulture
                               (DE)
2.
     Specialised exhibition.
3.
     Universal exhibition.

                                  OJ 1991, 240
                                         2
7.6.-7.7.1991                  PLOVDIV                Youth Inventiveness for a Peaceful
                               (BG)                   World
28.11.91-23.02.92              MILANO2                XVIIIth Triennale - Man-made and
                               (IT)                   Natural Environments - Confronting
                                                      the Ecological Challenge
20.04.-12.10.1992              SEVILLA3               The Age of Discovery
                               (ES)
April-Nov. 1992                DEN HAAG-              Horticulture
                               ZOETERMEER2
                               (NL)
15.05.-15.08.1992              GENOVA2                Christopher Columbus:
                               (IT)                   The Ship and the Sea
                                             2
23.4.-17.10.1993               STUTTGART              IGA 93 - Horticulture
                               (DE)
7.8.-7.11.1993                 TAEJON2                The Challenge of a New Road to
                               (KR)                   Development
2.
     Specialised exhibition.
3.
     Universal exhibition.




                                                                                                       33
Article 55(1)(b) – OJ 1979, 159 International Exhibitions



                                                                         1
                Period                         Place             Theme

                                                  OJ 1992, 202
                6.2.-3.5.1992                  MILANO2           XVIIIth Triennale - Man-made and
                                               (IT)              Natural Environments - Confronting
                                                                 the Ecological Challenge
                20.4.-12.10.1992               SEVILLA3          The Age of Discovery
                                               (ES)
                April-Nov. 1992                DEN HAAG-         Horticulture
                                               ZOETERMEER2
                                               (NL)
                15.5.-15.8.1992                GENOVA2           Christopher Columbus: The Ship
                                               (IT)              and the Sea
                23.4.-17.10.1993               STUTTGART2        IGA 93 - Horticulture
                                               (DE)
                7.8.-7.11.1993                 TAEJON2           The Challenge of a New Road to
                                               (KR)              Development
                2.
                     Specialised exhibition.
                3.
                     Universal exhibition.

                                                  OJ 1993, 266
                23.4.-17.10.1993               STUTTGART2        IGA 93 - Horticulture
                                               (DE)
                                                        2
                7.8.-7.11.1993                 TAEJON            The Challenge of a New Road to
                                               (KR)              Development
                11.5.-4.10.1996                BUDAPEST2         Communication for a better world
                                               (HU)
                2.
                     Specialised exhibition.


                                                  OJ 1994, 276
                                                        2
                7.8.-7.11.1993                 TAEJON            The Challenge of a New Road to
                                               (KR)              Development
                                                            2
                11.5.-4.10.1996                BUDAPEST          Communication for a better world
                                               (HU)
                2.
                     Specialised exhibition.


                                                  OJ 1995, 270
                11.5.-4.10.1996                BUDAPEST2         Communication for a better world
                                               (HU)
                                                        2
                11.5.-30.9.1998                LISBOA            The Oceans, a Heritage for the
                                               (PT)              Future
                2.
                     Specialised exhibition.



                                                  OJ 1996, 246
                22.5.-30.9.1998                LISBOA2           The Oceans, a Heritage for the
                                               (PT)              Future
                1.6.-31.10.2000                HANNOVER3         Man, Nature, Technology
                                               (DE)
                2.
                     Specialised exhibition.
                3.
                     Universal exhibition.




34
                                                  Article 55(1)(b) – OJ 1979, 159 International Exhibitions



                                                               1
Period                         Place                   Theme

                                   OJ 1997, 190
22.5.-30.9.1998                LISBOA2                 The Oceans, a Heritage for the
                               (PT)                    Future
1.5.-31.10.1999                KUNMING2                Horticultural Exhibition
                               (CN)
1.6.-31.10.2000                HANNOVER3               Man, Nature, Technology
                               (DE)
2.
     Specialised exhibition.
3.
     Universal exhibition.

                                   OJ 1998, 230
22.5.-30.9.1998                LISBOA2                 The Oceans, a Heritage for the
                               (PT)                    Future
1.5.-31.10.1999                KUNMING2                Horticultural Exhibition
                               (CN)
                                             3
1.6.-31.10.2000                HANNOVER                Man, Nature, Technology
                               (DE)
                                              2
25.3.-25.9.2005                SETO (Aichi)            Beyond Development: Discovering
                               (JP)                    Nature’s Wisdom
2.
     Specialised exhibition.
3.
     Universal exhibition.

                                   OJ 1999, 242
                                         2
1.5.-31.10.1999                KUNMING                 International Horticultural Exhibition
                               (CN)
                                             3
1.6.-31.10.2000                HANNOVER                EXPO 2000 - Man, Nature,
                               (DE)                    Technology
Mid-April - Mid-               HAARLEMMERMEER2         Floriade Haarlemmermeer
              4
October 2002                   (NL)
Mid-April - Mid-               ROSTOCK2                Floriade Rostock IGA
              4
October 2003                   (DE)
                                              2
25.3.-25.9.2005                SETO (Aichi)            Beyond Development: Discovering
                               (JP)                    Nature’s Wisdom
2.
     Specialised exhibition.
3.
     Universal exhibition.
4.
     Provisional dates.

                                   OJ 2000, 224
1.6.-31.10.2000                HANNOVER3               EXPO 2000 - Man, Nature,
                               (DE)                    Technology
                                                  2
Mid-April - Mid-               HAARLEMMERMEER          Floriade Haarlemmermeer
October 20024                  (NL)
                                         2
Mid-April - Mid-               ROSTOCK                 Floriade Rostock IGA
              4
October 2003                   (DE)
2.
     Specialised exhibition.
3.
     Universal exhibition.
4.
     Provisional dates.




                                                                                                        35
Article 55(1)(b) – OJ 1979, 159 International Exhibitions



                                                                                1
                Period                          Place                   Theme

                                                    OJ 2001, 227
                6.4.-20.10.2002                 HAARLEMMERMEER2         Floriade Haarlemmermeer
                                                (NL)
                25.4.-12.10.2003                ROSTOCK2                IGA 2003 - Horticultural exhibition
                                                (DE)
                25.3.-25.9.2005                 AICHI2                  Nature's Wisdom
                                                (JP)
                2.
                     Specialised exhibition.


                                                    OJ 2002, 228
                6.4.-20.10.2002                 HAARLEMMERMEER2         Floriade Haarlemmermeer
                                                (NL)
                                                            2
                25.4.-12.10.2003                ROSTOCK                 IGA 2003 - Horticultural exhibition
                                                (DE)
                7.5.-6.8.2004                   SEINE-SAINT-DENIS       SEMIMAGES 2004 - Images
                                                (Paris Ile-de-France)
                                                (FR)
                                                        2
                25.3.-25.9.2005                 AICHI                   Nature's Wisdom
                                                (JP)
                2.
                     Specialised exhibition.



                                                    OJ 2003, 161
                25.4.-12.10.2003                ROSTOCK2                IGA 2003 - Horticultural exhibition
                                                (DE)
                                                        2
                25.3.-25.9.2005                 AICHI                   Nature's Wisdom
                                                (JP)
                2.
                     Specialised exhibition.


                                                    OJ 2004, 223
                                                        2
                25.3.-25.9.2005                 AICHI                   Nature's Wisdom
                                                (JP)
                2.
                     Specialised exhibition.


                                                    OJ 2005, 295
                25.3.-25.9.2005                 AICHI2                  Nature's Wisdom
                                                (JP)
                2.
                     Specialised exhibition.
                                                    OJ 2006, 326
                01.11.06-31.01.07               CHIANG MAI2             Royal Flora Ratchaphruek
                                                                        2006/2007
                14.06.-13.09.2008               ZARAGOZA3               Water and Sustainable
                                                                        Development
                1.5.-31.10.2010                 SHANGHAI4               Better City - Better Life
                2.
                     International
                     Horticultural Exhibition
                     A1.
                3.
                     Recognised exhibition.
                4.
                     Registered exhibition.




36
                                                                 Article 55(1)(b) – OJ 1979, 159 International Exhibitions




2. The disclosure of an invention at one of these exhibitions by the applicant or his legal predecessor is not prejudicial to a
European patent application if it occurred no earlier than six months preceding the filing of the application and provided the
applicant states, when filing the application, that the invention has been so displayed and submits, within four months of the
filing of the application, the certificate of exhibition referred to in Rule 23 EPC.




                                                                                                                            37
Article 65 – OJ 2001, 549



                                                                                                                                  Article 65 – OJ 2001, 549




Agreement dated 17 October 2001 on the application of
Article 65 EPC

OJ 2001, 549
The above agreement, concluded in London on 17 October 2000, will liberalise the translation arrangements for European
patents. It is the fruit of work on reducing European patent costs, which was set in motion at the intergovernmental
conference held in France in 19991.

The text of the agreement is reproduced below. The parties to it undertake to waive, entirely or largely, the requirement for
translations of European patents to be filed in their national language. This means in practice that European patent
proprietors will no longer have to file a translation of the specification for patents granted for an EPC contracting state party to
the London Agreement and having one of the three EPO languages as an official language. Where this is not the case, they
will be required to submit a full translation of the specification in the national language only if the patent is not available in the
EPO language designated by the country concerned. For more details, see Articles 1 and 2 of the agreement. This
breakthrough on the language issue will significantly reduce the cost of European patents.

Ten contracting states have signed the agreement2. To enter into force, it must be ratified by at least eight, including the three
where the most European patents took effect in 19993 (Article 6 of the agreement).

Agreement on the application of Article 65 of the Convention on the Grant of European Patents

The States parties to this Agreement,

IN THEIR CAPACITY as Contracting States to the Convention on the Grant of European Patents (European Patent
Convention) of 5 October 1973,

REAFFIRMING their desire to strengthen co-operation between the States of Europe in respect of the protection of
inventions,

HAVING REGARD to Article 65 of the European Patent Convention,

RECOGNISING the importance of the objective to reduce the costs relating to the translation of European patents,

STRESSING the need for widespread adherence to that objective,

DETERMINED to contribute effectively to such cost reduction,

HAVE AGREED ON THE FOLLOWING PROVISIONS:

Article 1
Dispensation with translation requirements
(1) Any State party to this Agreement having an official language in common with one of the official languages of the
European Patent Office shall dispense with the translation requirements provided for in Article 65, paragraph 1, of the
European Patent Convention.

(2) Any State party to this Agreement having no official language in common with one of the official languages of the
European Patent Office shall dispense with the translation requirements provided for in Article 65, paragraph 1, of the
European Patent Convention, if the European patent has been granted in the official language of the European Patent Office
prescribed by that State, or translated into that language and supplied under the conditions provided for in Article 65,
paragraph 1, of the European Patent Convention.




1
     See OJ EPO 1999, 545.
2
     Denmark, France, Germany, Liechtenstein, Luxembourg, Monaco, Netherlands, Sweden, Switzerland, United Kingdom.
3
     France, Germany, United Kingdom.




38
                                                                                                        Article 65 – OJ 2001, 549




(3) The States referred to in paragraph 2 shall continue to have the right to require that a translation of the claims into one of
their official languages be supplied under the conditions provided for in Article 65, paragraph 1, of the European Patent
Convention.

(4) Nothing in this Agreement shall be construed as restricting the right of the States parties to this Agreement to dispense
with any translation requirement or to apply more liberal translation requirements than those referred to in paragraphs 2 and
3.

Article 2
Translations in case of dispute
Nothing in this Agreement shall be construed as restricting the right of the States parties to this Agreement to prescribe that,
in the case of a dispute relating to a European patent, the patent proprietor, at his own expense,

(a) shall supply, at the request of an alleged infringer, a full translation into an official language of the State in which the
alleged infringement took place,

(b) shall supply, at the request of the competent court or quasi judicial authority in the course of legal proceedings, a full
translation into an official language of the State concerned.

Article 3
Signature - Ratification
(1) This Agreement shall be open for signature by any Contracting State to the European Patent Convention until 30 June
2001.

(2) This Agreement shall be subject to ratification. Instruments of ratification shall be deposited with the Government of the
Federal Republic of Germany.

Article 4
Accession
This Agreement shall, on expiry of the term for signature mentioned in Article 3, paragraph 1, be open to accession by any
Contracting State to the European Patent Convention and any State which is entitled to accede to that Convention.
Instruments of accession shall be deposited with the Government of the Federal Republic of Germany.

Article 5
Prohibition of reservations
No State party to this Agreement may make reservations thereto.

Article 6
Entry into force
(1) This Agreement shall enter into force on the first day of the fourth month after the deposit of the last instrument of
ratification or accession by eight Contracting States to the European Patent Convention, including the three States in which
the most European patents took effect in 1999.

(2) Any ratification or accession after the entry into force of this Agreement shall take effect on the first day of the fourth month
after the deposit of the instrument of ratification or accession.

Article 7
Duration of the Agreement
This Agreement shall be concluded for an unlimited duration.

Article 8
Denunciation
Any State party to this Agreement may denounce it at any time once it has been in force for three years. Notification of
denunciation shall be given to the Government of the Federal Republic of Germany. The denunciation shall take effect one
year after the date of receipt of such notification. No rights acquired pursuant to this Agreement before the denunciation took
effect shall thereby be impaired.

Article 9
Scope
This Agreement shall apply to European patents in respect of which the mention of grant was published in the European
Patent Bulletin after the Agreement entered into force for the State concerned.




                                                                                                                                  39
Article 65 – OJ 2001, 549



Article 10
Languages of the Agreement
This Agreement, drawn up in a single original in the English, French and German languages shall be deposited with the
Government of the Federal Republic of Germany, the three texts being equally authentic.

Article 11
Transmissions and notifications
(1) The Government of the Federal Republic of Germany shall draw up certified true copies of this Agreement and shall
transmit them to the Governments of all signatory or acceding States.

(2) The Government of the Federal Republic of Germany shall notify to the Governments of the States referred to in
paragraph 1:

(a) any signature;
(b) the deposit of any instrument of ratification or accession;
(c) the date of entry into force of this Agreement;
(d) any denunciation received pursuant to Article 8 and the date on which it will take effect.

(3) The Government of the Federal Republic of Germany shall register this Agreement with the Secretariat of the United
Nations.

In WITNESS WHEREOF, the Plenipotentiaries authorised thereto, having presented their Full Powers, found to be in good
and due form, have signed this Agreement.

Done at London on 17 October 2000, in one original, in English, French and Germany, each text being equally authentic.




40
                                                                                                                     Article 75 – OJ 2005, 444



                                                                                                                                                                  Article 75
                                                                                                                                                  Article 75 – OJ 2005, 444




Termination of the Administrative Agreement between the
DPMA and the EPO concerning receipt of documents and
payments

OJ 2005, 444
In a judgment dated 23 November 2004 (11 W (pat) 41/03), the Federal Patents Court ruled unlawful the provision in the
"Administrative Agreement dated 29 June 1981 between the German Patent Office and the European Patent Office
concerning procedure on receipt of documents and payments", as amended on 13 October 1989 (OJ EPO 1981, 381; 1991,
187; BlPMZ (= OJ DPMA) 1981, 278; 1989, 373), stipulating that the date of receipt of documents filed with the EPO but
intended for the DPMA is the date on which they were received by the EPO.1 The judgment has now become final.

In view of this, the German Patent and Trademark Office (DPMA) stopped applying the Administrative Agreement on
1 March 2005, since when the filing date of documents intended for the DPMA but received and forwarded by the EPO has
been the date of their actual receipt at the DPMA.2

Following talks between the Presidents of the DPMA and EPO3, both offices have agreed, in the interests of legal certainty,
that in the light of the Federal Patents Court judgment the Administrative Agreement should no longer be applied.

Accordingly, from 1 September 2005 the EPO too will stop applying the Administrative Agreement and, in line with the
DPMA's new practice, the filing date of documents intended for the EPO but received and forwarded by the DPMA will be the
date of their actual receipt at the EPO.

Both offices will continue their postal exchange of documents received in error (to avoid further delays by returning them to
senders), but as a courtesy service and with no guarantee that it will occur within such time limits as may apply. The same
applies to payments received by post at the wrong office.

If a time limit is missed as a result of misdelivery, in many cases legal remedies (further processing and re-establishment of
rights) will be available.

We recommend that items – especially those subject to time limits – be filed in ways which minimise misdelivery risks (online,
by fax, in person, or using the relevant office's night letter-box). And to help ensure that payments reach the right office in
good time, parties can authorise direct debit (DPMA) or use a deposit account (EPO).


                                                                                                                                                  Article 75 – OJ 2005, 248




Notice regarding the Administrative Agreement between the
DPMA and the EPO concerning receipt of documents

OJ 2005, 248
The German Patent and Trade Mark Office (DPMA) website draws attention to a Federal Patents Court judgment dated
23 November 2004 (11 W (pat) 41/03) finding unlawful the provision in the "Administrative Agreement dated 29 June 1981
between the German Patent Office and the European Patent Office concerning procedure on receipt of documents and

1
    The decision is published in BIPMZ 4/2005, 183, and Mitteilungen der deutschen Patentanwälte (monthly journal of German patent attorneys) 3/2005,
    119.
2
    See BlPMZ 4/2005, 145; http://www.dpma.de/infos/aktuelles/aktuell20051103.html
3
    See the DPMA's notice referred to in footnote 2 above, and the EPO's notice in OJ EPO 4/2005, 248; http://www.european-patent-
    office.org/news/info/pdf/not04_04_2005.pdf.




                                                                                                                                                     41
Article 75 – OJ 1992, 183




payments", as amended on 13 October 1989 (OJ EPO 1981, 381; 1991, 187; BlPMZ (= OJ DPMA) 1981, 278; 1989, 373)
stipulating that the date of receipt of documents filed with the EPO but intended for the DPMA is the date on which they were
received by the EPO. The headnote of the judgment is available on the court's website
http://www.bpatg.de/bpatg/entscheidungen/technik/11041_03.htm; the full text will be published in BlPMZ 4/2005 and can
also be consulted in Mitteilungen der deutschen Patentanwälte (monthly journal of German patent attorneys) 3/2005, 119.

As a result of the judgment, the DPMA's receiving office now perforates documents intended for the DPMA, but received and
forwarded by the EPO, with the date of their receipt at the DPMA; see http://www.dpma.de/infos/aktuelles/aktuell20051103.html.

The DPMA and EPO are currently discussing how to proceed, including the possibility of setting the Administrative Agreement
aside. At least until these talks are concluded, the two offices will continue to exchange mail in accordance with the existing
practice based on the Administrative Agreement.

Until further notice, where documents intended for the EPO are received and forwarded by the DPMA, the EPO will continue
to regard the DPMA date-stamp as their date of receipt. It will also continue to forward to the DPMA without delay any
documents intended for the DPMA which it receives in error.

Applicants are however urgently advised to avoid any receipt-date risks by ensuring that mail is sent to the right
office. Under no circumstances should they try to save time or money by deliberately sending it to the wrong one.

A further announcement will be made once the discussions with the DPMA have been completed.


                                                                                                                             Article 75 – OJ 1992, 183




Notice from the European Patent Office dated 4 March 1992
concerning the Vienna sub-office

OJ 1992, 183
Important Notice
Please also note that Vienna - unlike Munich, The Hague and Berlin1 - is not a filing office for the purposes of
Article 75(1)(a) EPC, so European and international applications, documents and payments relating to them, and requests for
inspection of files, cannot be filed with this sub-office. Any such items nonetheless received will be forwarded by internal mail
to Munich or The Hague as applicable, and their date of receipt will be that of their arrival there.




1
     See OJ EPO 1989, 218, 221 and 1991, 223




42
                                                                                                                         Article 75 – OJ 2001, 459



                                                                                                                                                       Article 75 – OJ 2001, 459




Notice from the President of the European Patent Office dated
1 October 2001 concerning the programme for accelerated
prosecution of European patent applications - "PACE" 1

OJ 2001, 459
Over the last five years, the number of applications filed annually with the European Patent Office has more than doubled.
The Office has therefore taken numerous steps to cope with this enormous increase in its workload and thereby minimise
delays in grant proceedings. One such step has been to further improve and simplify the PACE programme for accelerated
prosecution of European patent applications.

PACE ensures that applicants who want their applications processed rapidly obtain the search report, the first examination
communication and any ensuing European patent as soon as possible. Taking flexible account of applicants' specific needs,
the programme thus reduces processing time considerably compared with the average.

As explained in more detail below, accelerated processing of European patent applications is carried out on written request.
The EPO does not publish requests for accelerated search and/or examination and, by decision of the President dated 7
September 20012, they are excluded from file inspection, provided they are made using EPO Form 1005 (see p. 463)3 or on a
separate sheet of paper.

Unless otherwise stated, PACE is also available for international applications entering the European phase before the EPO
("Euro-PCT applications").

Search

1. For European patent applications claiming no priority (first filings), the Office ensures that as a rule applicants obtain
their search reports within six months of the filing date. In such cases, accelerated search is automatic; no separate
request need be filed.

2. For European patent applications which do claim priority, accelerated search can be requested in writing when the
application is filed. In such cases, the Office makes every effort to issue the search report as soon as possible.

Examination

3. Accelerated examination can be requested in writing at any time: when filing the application, in response to the search
report, or subsequently.

For Euro-PCT applications, it can be requested on or after entry into the European phase before the EPO4. If requested on
entry, accelerated prosecution covers formalities examination, drawing up the supplementary search report, and substantive
examination. Where no supplementary search report is necessary5, it covers formalities and substantive examination.

4. When accelerated examination is requested, the Office makes every effort to issue the first examination communication
within three months of receipt by the examining division of the application or the request for accelerated examination
(whichever is the later).

All subsequent examination communications are issued within three months of receipt of the applicant's reply, provided this is
received within the time limit set by the examining division in its previous communication and deals with all the points raised.



1
    Revised and expanded version of the notice last published in OJ EPO 1997, 340.
2
    See OJ EPO 2001, 458.
3
    EPA/EPO/OEB Form 1005 11.01 is obtainable free of charge from the EPO (preferably from Vienna, but also from Munich, The Hague and Berlin)
    and the central industrial property offices of the contracting states. An editable version in pdf and Word for Windows formats will be available on the
    Office's Web site at http://www.european-patent-office.org.
4
    With Euro-PCT applications, the applicant can speed up entry into the European phase by expressly requesting early processing under Article 23(2)
    or 40(2) PCT. However, this does not automatically lead to accelerated examination in the European phase; that requires a separate request under the
    PACE programme.
5
    This is the case if the international search report was drawn up by the EPO or the Austrian, Spanish or Swedish patent offices.




                                                                                                                                                          43
Article 75 – OJ 2001, 465




Other ways of accelerating the European grant procedure

5. The applicant may request examination early (Article 96(1) EPC). He may also unconditionally waive his right to receive
an invitation from the EPO to confirm that he desires to proceed with the application6. This waiver allows the application to
reach the examining division more quickly, and may be made when filing the European patent application, or later by separate
communication to the EPO.

6. The applicant may file a substantive response to the search report, or - in the case of a Euro-PCT application entering the
European phase before the EPO as elected Office - to the international preliminary examination report, without waiting for the
first examination communication. A "substantive" response means reasoned observations or appropriate amendments to the
application.

7. If the application is ready for grant and the applicant has received the communication under Rule 51(4) EPC, the
subsequent procedure can be shortened significantly if the applicant approves the text without delay and requests immediate
grant under Article 97(6) EPC7.

For such a request to be valid, the applicant must, when filing it (if not before):

- pay the fees for grant and printing

- file the translations of the claims

- pay any additional claims fees and

- file any translation of the priority document required or the corresponding declaration (Rule 38(5) EPC).

The request will be processed only if the designation fees (Article 79(2), Rule 51(8a) EPC) and any renewal fee (plus
surcharge) already due have been paid. If the request is made less than three months before the due date of the next
renewal fee, applicants are advised to pay that fee too together with the request8.
                                                                                                                                                 Article 75 – OJ 2001, 465




Notice dated 1 October 2001 concerning new patent
application numbering system for 2002

- OJ 2001, 465 -
THIS TEXT IS REPRODUCED UNDER RULE 24(2) EPC.




6
     This applies mutatis mutandis to Euro-PCT applications entering the European phase and for which a supplementary European search report must be
     drawn up.
7
     See OJ EPO 1995, 841.
8
     Applicants using the automatic debiting procedure may have to pay these fees separately, ie outside that procedure, to ensure rapid grant (see
     point 12 of the Arrangements for the automatic debiting procedure and the EPO's explanatory notes - Supplement to OJ EPO 6/1994).




44
                                                                                                                       Article 79 – OJ 1994, 75



                                                                                                                                                                  Article 79
                                                                                                                                                    Article 79 – OJ 1994, 75




                                                                                                      1
Extension of European patents to Slovenia

OJ 1994, 75
I. Basic principles

The agreement between the European Patent Organisation and Slovenia on cooperation in the field of patents entered into
force on 1 September 1993. The supplementary agreement on extending the protection conferred by European patents
(Extension Agreement) and the Slovenian governmental ordinance on implementing the extension system (Extension
Ordinance) will enter into force on 1 March 1994. On the same date, the PCT will also enter into force for Slovenia2.

The extension system will provide European patent applicants with a simple and cost-effective way of obtaining protection in
Slovenia. At the applicant’s request, and on payment of the prescribed fee, European applications (direct or Euro-PCT) and
patents can be extended to Slovenia, where they will have the same effects as national applications and patents. The
extension system largely corresponds to the EPC system operating in the EPC Contracting States, except that it is based not
on direct application of the EPC but on national law modelled on the EPC.

The rules governing the new system are set out in the Extension Ordinance; this is based on Article 4 of the Slovenian Law
on Industrial Property (IPL)3 and is reproduced in Section VI below after the explanatory notes. The two flowcharts at the end
are intended as a further handy guide to the new procedure.

II. Extension system
Extension of European patent applications

1.    Extension occurs at the applicant’s request. It is deemed requested for any European patent application filed on or
      after 1 March 1994 (Article 2(1) Extension Ordinance). Extension is not available for applications filed prior to that date,
      or for any European patents resulting from such applications.

2.    The extension fee is DEM 2004. It must be paid to the EPO (not the Slovenian Patent Office) within the time limits
      prescribed in the EPC for paying the designation fees (Articles 79(2) and 78(2) EPC). After expiry of the basic time limit,
      the extension fee can still be validly paid under Rule 85a(2) EPC within a period of grace of two months, provided that
      within that period a surcharge of 50% is also paid (Article 3(1) and (2) Extension Ordinance).
      No notification of non-observance of the basic time limit or expiry of the period of grace is issued. Nor is re-
      establishment of rights possible in respect of payment of the extension fee.

3.    Payment of the extension fee is governed mutatis mutandis by the provisions of the EPO Rules relating to Fees
      (Article 3(3) Extension Ordinance). The fee and its equivalents in the currencies of the Contracting States will be added
      to the schedule of EPO fees, costs and prices and published in the EPO Official Journal.

4.    If the extension fee is not paid in due time, the request for extension is deemed withdrawn (Article 2(2) Extension
      Ordinance). By paying the extension fee the applicant is deciding to extend his European patent application to Slovenia.
      The declaration in Section 345 of the Request for grant of a European patent (EPA/EPO/OEB Form 1001 03.94), which
      is reproduced in this issue of the Official Journal, is merely for information purposes and is intended to assist in
      recording fee payments.

5.    The applicant can withdraw the request for extension at any time by informing the EPO of his wish to do so. The
      request for extension is also deemed withdrawn if by final decision the European patent application is refused,
      withdrawn or deemed withdrawn (Article 2(2) of the Extension Ordinance). Validly paid extension fees are not
      refunded (Article 3(3) Extension Ordinance).




1
     See OJ EPO 1993, 574.
2
     See OJ EPO 1994, 136.
3
     Law of 20 March 1992, as last amended by the Law of 29 May 1993; Legal Bulletin of the Republic of Slovenia Nos. 13/92 and 27/93. An English
     translation of the Law of 20 March 1992 has been published in Industrial Property Laws and Treaties; a German translation appeared in
     Bl. f. PMZ 1993, 303.
4
     See OJ EPO 1994, 86.
5
     Here the applicant is asked to state whether he intends to pay the extension fee.




                                                                                                                                                      45
Article 79 – OJ 1994, 75




6.    If a European patent application extends to Slovenia, any European divisional application arising from it can also be
      extended. The extension fee in that case must be paid within the time limits prescribed in Rule 25(2) EPC.

Extension of Euro-PCT applications
7. The Extension Ordinance also applies to international applications under the PCT filed on or after 1 March 1994
    provided that both the EPO and Slovenia are designated. If the national phase before the Slovenian Patent Office is
    opened is immaterial.

8.    The extension procedure is the same for Euro-PCT applications as for European ones, except that the extension fee
      upon entry into the regional phase must be paid to the EPO within the time limit of 21 or 31 months from the date of filing
      or priority date as prescribed in Rule 104b(1) EPC (Article 3(1) Extension Ordinance).

III. Effects of extension

9.    Under Article 4 of the Extension Ordinance, a European patent application for which extension has been requested is
      equivalent to a duly filed national application, and after publication confers provisional protection under Articles 93
      and 94 IPL6 provided the applicant communicates to the user of the invention the prescribed translation of the claims in
      Slovenian.

10. Once the EPO publishes the mention of grant, a European patent extending to Slovenia has the same effects as a
    national patent (Article 5(1) Extension Ordinance), provided however that within three months of that publication a
    translation of the claims in Slovenian is filed with the Slovenian Patent Office and the prescribed publication fee paid
    (Article 5(2) and (5) Extension Ordinance). This applies mutatis mutandis where the claims are amended in opposition
    proceedings before the EPO.

11. The provisions of Article 6 Extension Ordinance concerning the authentic text of the European application or patent
    correspond to those of Article 70 EPC.

12. Article 7 Extension Ordinance covers cases of collision between European and national applications or patents. It
    corresponds to Article 139(1) and (2) EPC, and makes clear that for subsequent Slovenian applications an earlier
    European application extending to Slovenia has the same prior-art effect as a national application. However, it only has
    such effect if the extension fee has been paid, thereby ensuring that not every European application counts as a prior
    right.

      This also applies mutatis mutandis if an earlier national application is prejudicial to a later European application
      extending to Slovenia.

13. Article 8 Extension Ordinance stipulates that where a European and national patent has the same priority the former
    takes precedence, to the extent that it protects the same invention. This is in line with the double-protection provisions of
    most EPC Contracting States.

14. The effects of extended European patents and applications can lapse retroactively. For example, the provisional
    protection conferred by a published European patent application is lost ab initio if the request for extension
    subsequently lapses. Similarly, to the extent that the patent granted for the application is revoked in EPO opposition
    proceedings, the provisional protection and other effects of the patent are again lost ab initio (Article 4(3), 5(6) Extension
    Ordinance).

      However, in such cases the European application continues to have the effect of a duly filed national application.

15. Renewal fees for extended European patents are payable to the Slovenian Patent Office, under the provisions
    governing national patents, for the years following that in which mention of grant of the European patent was published
    (Article 9 Extension Ordinance).

16. The Slovenian provisions concerning revocation of national patents (Articles 87-89 IPL) apply to extended European
    patents. The grounds for revocation under Slovenian law largely correspond to those in Article 139 EPC.




6
     Claims are granted for reasonable damages.




46
                                                                                                      Article 79 – OJ 1994, 75



IV. Informing the public

17. The EPO’s EPIDOS information register7 will in future give details about extension of European patent applications and
    patents, indicating the states for which extension has been requested and the relevant fee paid, and the lapse of any
    extension request already published in EPIDOS.

     The Register of European Patents, European Patent Bulletin and the patent documents published by the EPO, on the
     other hand, will not contain any information about the extension of European patents.

18. On expiry of the time limits for paying the extension fees, the EPO will inform the Slovenian Patent Office of the
    European applications for which extension has been validly requested. The Slovenian Patent Office will publish this
    information as soon as possible, but not earlier than 18 months from the relevant priority date (Article 2(1) Extension
    Ordinance). Lapses of extension requests will be published if details of the extension have already been published.

19. The Slovenian Patent Office will also publish the translations of the claims of extended European patents filed by
    applicants under Article 5(2) and (3) of the Extension Ordinance (Article 5(4) Extension Ordinance), and make known
    their subsequent fate in accordance with the provisions governing national patents.

V. Applicability of the EPC

20. In the extension procedure, the EPO will be acting purely on the basis of its obligations under its Cooperation and
    Extension Agreements concluded with Slovenia. The procedure itself and the legal effects of extension will be
    governed solely by Slovenian law. Only those provisions of the Convention, Implementing Regulations and the EPO
    Rules relating to Fees will apply which are referred to in the Slovenian provisions (Article 10 Extension Ordinance) -
    which is only the case for the time limits and arrangements for paying the extension fee (Article 3 Extension Ordinance).

21. Thus the EPC provisions concerning applicants’ legal remedies and appeals do not apply in respect of action taken by
    the EPO under the extension procedure. This is because here the Office will not be acting under the terms of the EPC.

VI. Extension Ordinance

REGULATION ON THE EXTENSION OF EUROPEAN PATENTS TO SLOVENIA UNDER THE AGREEMENT
IMPLEMENTING ARTICLE 3(3) OF THE COOPERATION AGREEMENT BETWEEN THE GOVERNMENT OF THE
REPUBLIC OF SLOVENIA AND THE EUROPEAN PATENT ORGANISATION

Article 1
Extension of the effects of European patents
A European patent application and a European patent extending to Slovenia shall, subject to the provisions of this Regulation,
have the effect of and be subject to the same conditions as a national patent application and a national patent under the IPL.

For the purposes of this Regulation,

(a) “European patent application” means an application for a European patent filed under the European Patent Convention
(EPC), as well as an international application filed under the Patent Cooperation Treaty for which the European Patent Office
(EPO) acts as designated or elected Office and in which Slovenia is designated;

(b) “extended European patent” means a European patent granted by the EPO on a European patent application in respect
of which extension to Slovenia has been requested;

(c) “national patent application” means a patent application filed under the IPL with the Office for the Protection of Industrial
Property (“the Office”);

(d) “national patent” means a patent granted on a national patent application.

Article 2
Request for extension
A European patent application and a European patent granted on such application shall be extended to Slovenia at the
request of the applicant. The request for extension shall be deemed to be filed with any European patent application filed on
or after 1 March 1994.
7
    See OJ EPO 1992, 469.




                                                                                                                              47
Article 79 – OJ 1994, 75




Any request for extension shall be published by the Office as soon as possible after it has been transmitted by the EPO but
not before the expiry of 18 months from the filing date or, if priority has been claimed, the earliest priority date.

The request for extension may be withdrawn at any time. It shall be deemed withdrawn where the prescribed extension fee
has not been paid in time or where the European patent application has been finally refused, withdrawn or deemed
withdrawn. The Office shall publish this as soon as possible if the request for extension has already been published.

Article 3
Extension fee
The extension fee under Article 2(2) shall be DEM 200. It is due to be paid to the EPO within the applicable time-limit provided
under the EPC for the payment of the designation fee.

The extension fee may still be validly paid within the period of grace of two months, as it is specified in Rule 85a(2) EPC,
provided that a surcharge of 50% is paid within this period.

For the payment of extension fees the EPO Rules relating to Fees shall apply mutatis mutandis. Extension fees validly paid
shall not be refunded.

Article 4
Effects of European patent applications
A European patent application which has been accorded a filing date shall be equivalent to a regular national application,
where appropriate with the priority claimed for the European patent application, whatever its outcome may be.

A published European patent application shall provisionally confer the protection conferred by Articles 93 and 94 IPL as from
the date on which a translation of the claims of the published European patent application into the Slovenian language has
been communicated by the applicant to the person using the invention in Slovenia.

The European patent application shall be deemed not to have had ab initio the effects referred to in paragraph (2) where the
request for extension has been withdrawn or is deemed withdrawn.

Article 5
Effects of European patents
An extended European patent shall, subject to paragraphs (2) to (6), confer from the date of publication of the mention of its
grant by the EPO the same rights as would be conferred by a national patent under Article 32 IPL.

Within three months from the date on which the mention of the grant of the European patent has been published, the owner of
the patent shall furnish to the Office a translation of the claims of the European patent into the Slovenian language and shall
pay the prescribed fee for publication.

If, as a result of an opposition filed with the EPO, the European patent is maintained with amended claims, the owner of the
patent shall, within three months from the date on which the decision to maintain the European patent as amended was
published, furnish to the Office a translation of the amended claims into the Slovenian language and pay the prescribed fee
for publication.

The Office shall publish any translation duly filed under paragraph (2) or (3).

If the translation specified in paragraph (2) or (3) is not filed in due time or the prescribed fee is not paid in due time, the
extended European patent shall be deemed to be void ab initio.

An extended European patent and the European patent application on which it is based shall be deemed not to have had ab
initio the effects specified in paragraph (1) and Article 4(2) to the extent that the patent has been revoked in opposition
proceedings before the EPO.

Article 6
Authentic text of European patent applications or European patents
The text of a European patent application or a European patent in the language of the proceedings before the EPO shall be
the authentic text in any proceedings in Slovenia.

However, the translation as provided for under Articles 4 and 5 shall be regarded as authentic, except in revocation
proceedings, where the application or patent in the language of the translation confers protection which is narrower than that
conferred by it in the language of the proceedings.



48
                                                                                                     Article 79 – OJ 1994, 75




The applicant or owner of the patent may file a corrected translation of the claims of the European patent application or
European patent. The corrected translation shall not have any legal effects until it has been published by the Office. Any
person who, in good faith, uses or has made effective and serious preparations for using an invention, the use of which would
not constitute infringement of the application or patent in the original translation may, after the corrected translation takes
effect, continue such use in the course of his business or for the needs thereof without payment.
Article 7
Rights of earlier date
A European patent application for which the extension fee has been paid and an extended European patent shall have with
regard to a national patent application and a national patent the same prior art effect as a national patent application and a
national patent under Article 9 No. 2 IPL.

A national patent application and a national patent shall have with regard to an extended European patent the same prior art
effect as they have with regard to a national patent under Article 9 No. 2 IPL.
Article 8
Simultaneous protection
Where an extended European patent and a national patent having the same filing date or, where priority has been claimed,
the same priority date have been granted to the same person or his successor in title, the national patent shall have no effect
to the extent that it covers the same invention as the extended European patent as from the date on which the time limit for
filing an opposition to the European patent has expired without an opposition having been filed or as from the date on which
the opposition procedure has resulted in a final decision maintaining the European patent.
Article 9
Renewal fees for extended European patents
Renewal fees for an extended European patent shall be paid to the Office for the years following the year in which the
mention of the grant of the European patent was published by the EPO.
Article 10
Applicability of the EPC
The provisions of the EPC and its Implementing Regulations shall not apply unless otherwise provided in this Regulation.
Article 11
Entry into force
This Regulation shall enter into force on the day following its publication in the Official Gazette of the Republic of Slovenia.

Annex
(not part of the Regulation)
For the payment of the extension fee of DEM 200 made in currencies other than Deutsche Mark the following equivalents
have been laid down:

                                                GBP                         80
                                                FRF                        710
                                                CHF                        180
                                                NLG                        230
                                                SEK                        970
                                                BEF/LUF                  4 300
                                                ITL                    192 000
                                                ATS                      1 430
                                                ESP                     16 900
                                                GRD                     29 000
                                                DKK                        800
                                                PTE                     21 300
                                                IEP                         85
VII. Flowcharts8




8
    Flowcharts see OJ EPO 1994, pages 86-87.




                                                                                                                             49
Article 79 – OJ 1999, 183



                                                                                                                               Article 79 – OJ 1999, 183




Extension of European patents to Slovenia

OJ 1999, 183
The Slovenian Extension Ordinance1 (Article 5 - Effects of European patents) has been amended: all requests for extension
which have not been entered in the Slovenian patent register prior to 28 December 1998 (the entry into force of the
amendment) shall be treated according to the new paragraph (4), ie drawings referred to in the claims shall be attached to the
translation specified in paragraph (2) or (3) and any text matter in those drawings shall also be translated.

Users of the EPO information brochure “National law relating to the EPC” (10th edition) are asked to make the appropriate
amendments to Table XI, column 3.


                                                                                                                               Article 79 – OJ 1994, 201




Extension of European patents to Latvia and Lithuania

OJ 1994, 201
On 25 January 1994 in Munich the President of the European Patent Office (EPO) and the heads of the patent offices of
Latvia and Lithuania signed agreements on far-reaching patent co-operation.

Of special importance for European industry are the agreements on extension of the effects of European patent
applications and patents to Latvia and Lithuania: these provide a simple and cost-effective route to effective patent
protection there. “Extended” European patents confer essentially the same protection in the two countries as those currently
granted by the EPO for the 17 member states of the European Patent Organisation.

A similar agreement signed last year with Slovenia1 entered into force on 1 March 1994.

For Latvia and Lithuania, the extension agreements will probably take effect in mid-1994, once the necessary legislative and
administrative arrangements have been made.

The EPO will also be co-operating intensively with the two national patent offices to help them develop the infrastructure
for an effective patent system. In particular, it will provide training for their staff and the local patent profession, and assist
the two offices in computerisation and in building up a patent information system.

For further details of the extension system, see OJ EPO 1994, 75.




1
     OJ EPO 1994, 75 (80).
1
     OJ EPO 1993, 574




50
                                                                                                                        Article 79 – OJ 1994, 527



                                                                                                                                                      Article 79 – OJ 1994, 527




                                                                                                          1
Extension of European patents to Lithuania

OJ 1994, 527
The agreement on extending the protection conferred by European patents2 - Extension Agreement - will enter into force
on 5 July 1994. On the same date, the PCT will also enter into force for Lithuania3. The rules governing the new system are
set out in the Lithuanian Patent Law (LPL, Chapter 10)4 and correspond to those set out in the Extension Ordinance of
Slovenia5.

Extension system

1.    Extension occurs at the applicant’s request. It is deemed requested for any European patent application filed on or
      after 5 July 1994 (Article 51(1) LPL). Extension is not available for applications filed prior to that date, or for any
      European patents resulting from such applications.

2.    Extension is also deemed requested for all international applications filed on or after 5 July 1994 provided that both
      the EPO and Lithuania are validly designated (Euro-PCT applications).

3.    The extension fee is DEM 200. It must be paid to the EPO within the time limits prescribed in the EPC for paying the
      designation fees (Articles 79(2) and 78(2) EPC). After expiry of the basic time limit, the extension fee can still be validly
      paid under Rule 85a(2) EPC within a period of grace of two months, provided that within that period a surcharge of 50%
      is also paid.

      The payment period for Euro-PCT applications is 21 or 31 months from the date of filing or the priority date
      (Rule 104b(1) EPC).

4.    Applicants intending to pay the extension fee for Lithuania are asked to enter Lithuania (LT) in section 34 of the Request
      for Grant form (Form 1001) and to cross the appropriate box.




1
     see OJ EPO 1994, 201.
2
     It is based on the agreement between the European Patent Organisation and Lithuania on cooperation in the field of patents which entered into force
     on 1 March 1994.
3
     See OJ EPO 1994, 333.
4
     Law of 18 January 1994; in force since 1 February 1994; The State News of the Republic of Lithuania - 1994, No. 8 - 120 -
5
     For further information on the basic principles of Extension see OJ EPO 1994, 75.




                                                                                                                                                         51
Article 79 – OJ 1995, 345



                                                                                                                                                       Article 79 – OJ 1995, 345




                                                                                                  1
Extension of European patents to Latvia

OJ 1995, 345
The agreement on extending the protection conferred by European patents2 - Extension Agreement - will enter into force on 1
May 1995. The rules governing the new system are set out in the Latvian Patent Law (LPL/1995, Chapter 5) and correspond
to those set out in the Extension Ordinance of Slovenia3 and in the Lithuanian Patent Law4.

Extension system

1.    Extension occurs at the applicant’s request. It is deemed requested for any European patent application filed on or after
      1May 1995 (Art.18(3) LPL/1995). Extension is not available for applications filed prior to that date, or for any European
      patents resulting from such applications.

2.    Extension is also deemed requested for all international applications filed on or after 1May 1995 provided that both the
      EPO and Latvia are validly designated (Euro-PCT applications).

3.    The extension fee is DEM 200. It must be paid to the EPO (not the Latvian Patent Office; Art.18(8) LPL/1995) within the
      time limits prescribed in the EPC for paying the designation fees (Art. 79(2) and 78(2) EPC). After expiry of the basic
      time limit, the extension fee can still be validly paid under Rule 85a(2) EPC within a period of grace of two months,
      provided that within that period a surcharge of 50% is also paid.

      The payment period for Euro-PCT applications is 21 or 31 months from the date of filing or the priority date
      (Rule 104b(1) EPC).

4.    Applicants intending to pay the extension fee for Latvia are asked to enter Latvia (LV) in section 34 of the Request for
      Grant form (Form 10015 and to cross the appropriate box. The same applies for section 11 of Form 1200 for Euro-PCT
      applications entering the regional phase.


                                                                                                                                                       Article 79 – OJ 1995, 803




Extension of European patents to Albania

OJ 1995, 803
On 3 November 1995 in Munich the President of the European Patent Office and a representative of the Albanian
government signed an agreement on far-reaching patent co-operation.

Of special importance for European industry is the section governing the extension of European applications and patents
to Albania. This latest addition to the series of similar agreements already signed with Slovenia1, Lithuania2, Latvia3 and
Romania4 will provide in the foreseeable future a simple and cost-effective route to sound patent protection there: "extended”
European patents will confer essentially the same protection in Albania as those currently granted by the EPO for the 17
member states of the European Patent Organisation.

1
     See OJ EPO 1994, 201.
2
     It is based on the agreement between the European Patent Organisation and Latvia on co-operation in the field of patents which entered into force on
     1March 1994.
3
     For further information on the basic principles of extension see OJ EPO 1994, 75.
4
     See OJ EPO 1994, 527.
5
     See OJ EPO 1994, 501.
1
     OJ EPO 1994, 75 (see also for more details about the extension system).
2
     OJ EPO 1994, 527.
3
     OJ EPO 1995, 345.
4
     OJ EPO 1994, 746 (not yet in force).




52
                                                                                                                         Article 79 – OJ 1996, 82




The relevant parts of the agreement will take effect once the necessary Albanian legislation enters into force. The exact date
will be announced in the Official Journal in due course.

The EPO has also agreed on intensive technical co-operation with the Albanian Patent Office. In particular, it will provide
training for its staff and the local patent profession, and help modernise the ALPO and its patent information system.


                                                                                                                                                      Article 79 – OJ 1996, 82




Extension of European patents to Albania

OJ 1996, 82
The agreement on extending the protection conferred by European patents - Extension Agreement - entered into force on
1 February 19961. The rules governing the new system are set out in the Extension Ordinance of Albania and correspond to
those of the other "Extension States” (Slovenia2, Latvia3 and Lithuania4).

Extension system

1.    Extension occurs at the applicant’s request. It is deemed requested for any European patent application filed on or
      after 1 February 1996. Extension is not available for applications filed prior to that date, or for any European patents
      resulting from such applications.

2.    Extension is also deemed requested for all international applications filed on or after 1 February 1996 provided that
      both the EPO and Albania are validly designated (Euro-PCT applications).

3.    The extension fee is DEM 200. It must be paid to the EPO (not the Albanian Patent Office) within the time limits
      prescribed in the EPC for paying the designation fees (Art. 79(2) and 78(2) EPC). After expiry of the basic time limit, the
      extension fee can still be validly paid under Rule 85a(2) EPC within a period of grace of two months, provided that within
      that period a surcharge of 50% is also paid.

      The payment period for Euro-PCT applications is 21 or 31 months from the date of filing or the priority date
      (Rule 104b(1) EPC).

4.    Since the decision on the entry into force of the Extension Agreement had not been issued when the Request for Grant
      form (Form 1001)5 was revised, it was not possible to include Albania in section 34. Applicants intending to pay the
      extension fee for Albania are accordingly asked to enter Albania (AL) in section 34 of Form 1001 and to cross the
      appropriate box. The same applies for section 11 of Form 12006 for Euro-PCT applications entering the regional phase
      for which both the EPO and Albania have been validly designated.




1
     It forms part of the agreement of 3 November 1995 between the European Patent Organisation and Albania on co-operation in the field of patents
     (OJ EPO 1995, 803).
2
     OJ EPO 1994, 75.
3
     OJ EPO 1995, 345.
4
     OJ EPO 1994, 527.
5
     OJ EPO 1995, 789.
6
     OJ EPO 1995, 634.




                                                                                                                                                        53
Article 79 – OJ 1997, 345



                                                                                                                                                      Article 79 – OJ 1997, 345




Extension of European patents to the former Yugoslav
Republic of Macedonia

OJ 1997, 345
On 24 June 1997 in Munich, the President of the European Patent Office and a representative of the Macedonian government
concluded a far reaching agreement on patent co-operation.

Of special importance for European industry is the section governing the extension of European applications and patents
to the former Yugoslav Republic of Macedonia. This latest addition to the series of similar agreements already signed with
Slovenia1 Lithuania2, Latvia3, Albania4 and Romania5 will provide in the foreseeable future a simple and cost-effective route to
sound patent protection there: “extended” European patents will confer essentially the same protection in the former Yugoslav
Republic of Macedonia as those currently granted by the EPO for the 18 member states of the European Patent Organisation.

The relevant parts of the agreement will take effect once the necessary Macedonian legislation enters into force. The exact
date will be announced in the Official Journal in due course.

The EPO has also agreed on intensive technical co-operation with the Macedonian Patent Office. In particular, it will provide
training for its staff and the local patent profession, and help modernise the MKPO and its patent information system.


                                                                                                                                                      Article 79 – OJ 1997, 538




Extension of European patents to the
former Yugoslav Republic of Macedonia

OJ 1997, 538
The agreement with the former Yugoslav Republic of Macedonia on co-operation in the field of patents1 (Co-operation
Agreement) enters into force on 1 November 1997, from which date it will therefore be possible to extend the protection
conferred by European patents to the former Yugoslav Republic of Macedonia too (the other “extension states” are Slovenia2,
Lithuania3, Latvia4, Albania5 and Romania6).

The rules governing extension in the former Yugoslav Republic of Macedonia are set out in the governmental ordinance on
the extension of European patents7:

1. Extension occurs at the applicant’s request. It is deemed requested for any European patent application filed on or
after 1 November 1997 (Article 2(1) Extension Ordinance). Extension to the former Yugoslav Republic of Macedonia is not
available for applications filed prior to that date, or for any European patents resulting from such applications.



1
     OJ EPO 1994, 75 (see also for more details about the extension system).
2
     OJ EPO 1994, 527.
3
     OJ EPO 1995, 345.
4
     OJ EPO 1996, 82.
5
     OJ EPO 1996, 601.
1
     OJ EPO 1997, 345; clarification: the word “Macedonian”, used at certain points in the announcement cited, refers exclusively to the former Yugoslav
     Republic of Macedonia.
2
     OJ EPO 1994, 75.
3
     OJ EPO 1994, 527.
4
     OJ EPO 1995, 345.
5
     OJ EPO 1996, 82.
6
     OJ EPO 1996, 601.
7
     Government gazette No. 49 (30 September 1997) of the former Yugoslav Republic of Macedonia.




54
                                                                                                      Article 79 – OJ 1997, 538




2. Extension is also deemed requested for all international applications filed on or after 1 November 1997 in which both
the EPO and the former Yugoslav Republic of Macedonia are validly designated (Euro-PCT applications).

3. The extension fee is DEM 200. For European applications, it must be paid to the EPO (not the Patent Office of the former
Yugoslav Republic of Macedonia) within the time limits prescribed in the EPC for paying the designation fee
(Article 79(2) EPC). For Euro-PCT applications, the payment period is 21 or 31 months from the date of filing or priority
(Rule 104b(1) EPC).

After expiry of the relevant basic time limit, the extension fee can still be validly paid under Rule 85a(2) EPC within a period of
grace of two months, provided that within that period a surcharge of 50% is also paid (Article 3 Extension Ordinance). No
notification of non-observance of the basic time limit or expiry of the period of grace is issued. Nor is re-establishment of
rights possible in respect of payment of the extension fee.

4. Payment of the extension fee is governed mutatis mutandis by the provisions of the EPO Rules relating to Fees (Article 3
Extension Ordinance). Applicants who intend to pay the extension fee for the former Yugoslav Republic of Macedonia are
requested to enter that country (MK) in Section 34 of the request for grant (EPA/EPO/OEB Form 10018) and mark the
corresponding box with a cross. This declaration is merely for information purposes, to assist in recording fee payments. The
same applies mutatis mutandis to Section 11 of Form 12009 for Euro-PCT applications entering the regional phase, where
both the EPO and the former Yugoslav Republic of Macedonia were validly designated.

5. If the extension fee is not paid in due time, the request for extension is deemed withdrawn (Article 2(3) Extension
Ordinance).

6. The applicant can withdraw the request for extension at any time by informing the EPO accordingly. The request is also
deemed withdrawn if by final decision the European patent application is refused, withdrawn or deemed withdrawn
(Article 2(3) Extension Ordinance). Validly paid extension fees are not refunded (Article 3 Extension Ordinance).

7. If a European patent application extends to the former Yugoslav Republic of Macedonia, any European divisional
application arising from it can also be extended. The extension fee in that case must be paid within the time limits
prescribed in Rule 25(2) EPC.

8. Under Article 4 of the Extension Ordinance a European patent application for which extension has been requested is
equivalent to a duly filed national application, and after publication confers provisional protection under Articles 94
and 95 of the Patent Law of the former Yugoslav Republic of Macedonia, provided the applicant communicates to the
invention’s user in the former Yugoslav Republic of Macedonia a translation of the claims into the national language.

9. Once the EPO publishes the mention of grant, a European patent extending to the former Yugoslav Republic of Macedonia
has the same effects as a national patent (Article 5(1) Extension Ordinance), provided however that within 3 months of that
publication the patent proprietor files a translation of the claims of the extended European patent into the national language
and has paid the prescribed publication fee (Article 5(2) Extension Ordinance). If the European patent is maintained with
amended claims in opposition proceedings before the EPO, the same applies mutatis mutandis to the amended claims of the
extended European patent (Article 5(3) Extension Ordinance).

10. The provisions concerning the authentic text of the European application or patent (Article 6 Extension Ordinance)
correspond to those of Article 70 EPC.

11. The provisions on collision between European and national applications or patents (Article 7 Extension Ordinance)
correspond to Article 139(1) and (2) EPC, and make clear that a validly extended earlier European application has the same
prior-art effect for subsequent national applications as a national application. This also applies mutatis mutandis if an earlier
national application is prejudicial to a subsequent extended European application.

12. Where an extended European patent and a national patent have the same priority, the former takes precedence in
so far as it protects the same invention (Article 8 Extension Ordinance). This is in line with the double-protection provisions of
most EPC contracting states.

13. The effects of extending European patents and applications can lapse retroactively. For example, the provisional
protection conferred by a published European patent application is lost ab initio if the request for extension subsequently
8
    OJ EPO 1997, 251.
9
    OJ EPO 1997, 32.




                                                                                                                                55
Article 79 – OJ 2004, 117




lapses. Similarly, to the extent that the patent granted for the application is revoked in EPO opposition proceedings, the
provisional protection and other effects of the patent are again lost ab initio (Articles 4(3) and 5(6) Extension Ordinance).
However, the European application continues to have the effect of a duly filed national application.

14. Renewal fees for extended European patents are payable to the Patent Office of the former Yugoslav Republic of
Macedonia, under the provisions governing national patents, for the years following that in which mention of grant of the
European patent was published (Article 9 Extension Ordinance).

15. Extension of European patent applications and patents is mentioned in the EPO publications (EPIDOS Information
Register, Patent Bulletin, A and B documents)10.

16. In the extension procedure, the EPO will be acting purely on the basis of its obligations under the Co-operation
Agreement with the former Yugoslav Republic of Macedonia. The procedure itself and the legal effects of extension will be
governed solely by the law of the former Yugoslav Republic of Macedonia. Only those provisions of the EPC, its
Implementing Regulations and the EPO Rules relating to Fees will apply which are referred to in the provisions of the former
Yugoslav Republic of Macedonia (Article 10 Extension Ordinance) - which is only the case for the time limits and
arrangements for paying the extension fee.

Thus the EPC provisions concerning applicants’ legal remedies and appeals do not apply in respect of action taken by the
EPO under the extension procedure, because here the Office is not acting under the EPC.


                                                                                                                                 Article 79 – OJ 2004, 117




Extension of European patents to the Republic of Croatia (HR)

OJ 2004, 117
On 16 June 2003, the President of the European Patent Office and the Minister for European Integration of the Republic of
Croatia signed an agreement on co-operation in the field of patents (Co-operation and Extension Agreement). The agreement
enters into force on 1 April 2004. From this date it will be possible to extend the protection conferred by European patent
applications and patents to the Republic of Croatia. Extended European patent applications and patents will enjoy essentially
the same protection in the Republic of Croatia as the patents granted by the EPO for the currently 28 member states of the
European Patent Organisation. Articles 99 to 109 of the Croatian Patent Act as in force since 1 January 2004 govern the
extension of European patents in the Republic of Croatia:

Extension occurs at the applicant’s request. It is deemed requested for any European and international patent application filed
on or after 1 April 2004. Extension to the Republic of Croatia is not available for applications filed prior to that date, or for any
European patents resulting from such applications.

The extension fee is EUR 102. It must be paid to the EPO within the time limits prescribed in the EPC for paying designation
fees (Article 79(2) EPC, Rule 107(1)(d) EPC). After expiry of the relevant basic time limit, the extension fee can still be validly
paid within the period of grace for the payment of designation fees, provided that within that period a surcharge of 50% is also
paid. If the extension fee is not paid in due time, the request for extension is deemed withdrawn.

Further information concerning the extension of European patent applications and patents to Croatia will be published in later
issues of the Official Journal.




10
     See OJ EPO 1997, 479.




56
                                                                                                    Article 79 – OJ 2004, 563



                                                                                                                            Article 79 – OJ 2004, 563




Extension of European patents to Serbia and Montenegro (YU)

OJ 2004, 563
1. On 26 November 2001, the President of the European Patent Office and the Federal Minister of Economy and Internal
Trade of the Federal Republic of Yugoslavia signed an agreement on co-operation in the field of patents (Co-operation and
Extension Agreement).

2. This agreement enters into force on 1 November 2004. From this date it will be possible to extend the protection conferred
by European patent applications and patents to Serbia and Montenegro (formerly known as the Federal Republic of
Yugoslavia). Extended European patent applications and patents will enjoy essentially the same protection in Serbia and
Montenegro as the patents granted by the EPO for the currently 29 member states of the European Patent Organisation.

3. Articles 120-129 of the Serbian and Montenegrin Patent Act as in force since 10 July 2004 govern the extension of
European patents in Serbia and Montenegro.

4. Extension occurs at the applicant's request.

4.1 Extension to Serbia and Montenegro is deemed requested for any European and international patent application filed on
or after 1 November 2004. Extension to Serbia and Montenegro is not available for applications filed prior to that date, or for
any European patents resulting from such applications. The extension fee is EUR 102. It must be paid to the EPO within the
time limits prescribed in the EPC for paying designation fees (Article 79(2) EPC, Rule 107(1)(d) EPC). After expiry of the
relevant basic time limit, the extension fee can still be validly paid within the period of grace for the payment of designation
fees, provided that within that period a surcharge of 50% is also paid.

4.2 If the extension fee is not paid in due time, the request for extension is deemed withdrawn. Further information concerning
the extension of European patent applications and patents to Serbia and Montenegro will be published in later issues of the
Official Journal.


                                                                                                                            Article 79 – OJ 2004, 619




Extension of European patents to Bosnia and Herzegovina
(BA)

OJ 2004, 619
1. On 1 December 2003, the President of the European Patent Office and the Minister of Foreign Trade and Economic
Relations of Bosnia and Herzegovina signed an agreement on co-operation in the field of patents (Co-operation and
Extension Agreement).

2. This agreement entered into force on 1 December 2004. From this date it will be possible to extend the protection
conferred by European patent applications and patents to Bosnia and Herzegovina. Extended European patent applications
and patents will enjoy essentially the same protection in Bosnia and Herzegovina as the patents granted by the EPO for the
currently 30 member states of the European Patent Organisation.

3. The legal provisions governing the extension of European patents in Bosnia and Herzegovina were published in Sluzebni
Glasnik BiH (Official Journal of Bosnia and Herzegovina) No. 2/2004, 119 ff on 3 June 2004 and came into force on that date.

4. Extension occurs at the applicant's request.




                                                                                                                               57
Article 79 – OJ 1997, 79




4.1 Extension to Bosnia and Herzegovina is deemed requested for any European and international patent application filed on
or after 1 December 2004. Extension to Bosnia and Herzegovina is not available for applications filed prior to that date, or for
any European patents resulting from such applications. The extension fee is EUR 102. It must be paid to the EPO within the
time limits prescribed in the EPC for paying designation fees (Article 79(2) EPC, Rule 107(1)(d) EPC). After expiry of the
relevant basic time limit, the extension fee can still be validly paid within the period of grace for the payment of designation
fees, provided that within that period a surcharge of 50% is also paid.

4.2 If the extension fee is not paid in due time, the request for extension is deemed withdrawn. Further information concerning
the extension of European patent applications and patents to Bosnia and Herzegovina will be published in later issues of the
Official Journal.


                                                                                                                              Article 79 – OJ 1997, 79




More time to pay designation fees

OJ 1997, 79
1. On 5 December 1996 (see page 12 et seq.), the Administration Council of the European Patent Organisation amended the
European Patent Convention (EPC), its Implementing Regulations and the Rules relating to Fees (RFees) with effect from
1 July 1997.

...

New time limit for paying designation fees

5. With effect from 1 July 1997, the designation fees for European patent applications are payable within six months of
the date on which the European Patent Bulletin mentions the publication of the European search report (Art. 79(2) EPC as
amended). The time limit for paying the designation fees will thus in future be the same as that for filing the request for
examination (Art. 94(2) EPC) and paying the examination fee. Even if the examination fee is paid early, the designation fees
can be paid at any time within the new time limit under Art. 79(2) EPC as amended. Rule 85a EPC remains unaffected.

6. The new time limit for paying the designation fees applies to all European patent applications for which on 1 July 1997 the
designation fees in force before that date have not yet been validly paid and the time limit for paying them, under Art. 79(2)
EPC as currently worded, has not expired.

7. For paying designation fees for Euro-PCT applications on entry into the European phase before the EPO, the 21- or
31-month time limits as from the filing or priority date (Rule 104b(1) EPC) continue to apply. Art. 79(2) EPC as amended is not
applicable.


                                                                                                                             Article 79 – OJ 1997, 429




New patent law in Hong Kong

OJ 1997, 429
On 27 June 1997 a new Patents Ordinance entered into force in Hong Kong, establishing an independent patent system
there. It provides that applications to certain “designated patent offices” and patents granted by those offices will continue to
form the basis of an application for a standard patent in Hong Kong. The designated patent offices are:



58
                                                                                                     Article 79 – OJ 1997, 429




- the Chinese Patent Office;
- the United Kingdom Patent Office;
- the European Patent Office, in respect of applications and patents designating the UK.

A standard patent has a maximum term of 20 years from the deemed date of filing, ie the date of filing of the designated
patent application. The Ordinance also provides for short-term patents with a maximum term of 8 years from the filing date, ie
the date of filing of the application in Hong Kong (see paragraph IV).

1. Procedure for applying for a standard patent

There is a two-stage registration procedure. Within 6 months of publication of the designated patent application the
following steps must be taken (Section 15 Patents Ordinance):

(i) the filing of a request to record, on IPD Form P4.

(ii) provision of a photocopy of the designated patent application as published (no need for certification);

(iii) payment of the filing and advertisement fees.

According to Section 16 of the Patents Ordinance, where a designated patent application is in the national phase of an
international application under the Patent Cooperation Treaty, the date of publication is the date on which the designated
patent office indicates that the international application has validly entered the national phase. In the case of European
patents designating the UK, this will be the date on which the bibliographic data were published in the European Patent
Bulletin.

The title of the invention and the abstract must be available in both the English and Chinese languages (Section 104
Patents Ordinance, Rule 56 Patents (General) Rules).

Annual fees to maintain a standard patent application must be paid if the application has been pending for five years or any
succeeding year after the date of publishing the request to record (Section 33 Patents Ordinance).

For any PCT application filed on or after 1 July 1997, the designation of China will apply to Hong Kong. However, the
two-stage registration procedure will also apply to such applications.

Within six months of grant of the designated patent or publication of the request to record, whichever is the later, the
following steps must be taken (Section 23 Patents Ordinance):

(i) a request for registration and grant (IPD Form P5) must be filed;

(ii) a verified copy of the published specification of the designated patent must be filed;

(iii) payment of filing and advertisement fees.

The title of the invention must be available in both English and Chinese (Section 104 Patents Ordinance, Rule 56 Patents
(General) Rules).

Any amendment of the designated patent as a result of prescribed opposition or revocation proceedings in the designated
patent office must be notified to the Registrar within three months beginning from the date of amendment in the designated
patent office or the date of grant of the standard patent, whichever is the later (Section 43 Patents Ordinance, Rules 35 and
36 Patents (General) Rules).

If the designated patent has been revoked in the prescribed proceedings in the designated patent office the proprietor must
file a verified copy of the order of revocation or other prescribed documentation with the Registrar who shall advertise this fact
(Section 44(2) and (3) Patents Ordinance).

Any person other than the proprietor may then apply to the Registrar for an order that the standard patent be revoked
following the prescribed proceedings. The Registrar may either revoke the standard patent or may refer the application to the
appropriate court (Section 44(4) Patents Ordinance).




                                                                                                                               59
Article 79 – OJ 2004, 179




2. Transitional arrangements

(i) All existing registered patents in force on 27 June in the United Kingdom will automatically be deemed to be standard
patents and:

are deemed to have been granted on and to take effect from 27 June 1997;

shall have first renewal fees due from the fourth year after 27 June 1997.

(ii) Pending applications for registration which have been lodged under the old law before 27 June 1997 but which have
not yet been approved will, once registered, automatically become deemed standard patents. They shall be deemed to have
been registered under the old law on 26 June 1997 and:

are deemed to have been granted on and to take effect from 27 June 1997;

shall have first renewal fees due from the fourth year after 27 June 1997.

(iii) Existing UK patents and European patents (UK) which have taken effect in the UK before 27 June 1997 but which
have not been the subject of an application for registration under the old law before this date may be registered provided the
applicant makes a request for registration and grant within:

12 months after 27 June 1997; or 5 years after the date of grant of the patent or of its taking effect in the UK, whichever is
the earlier.

(iv) UK 1977 Act patent applications and European patent applications designating the UK published before 27 June 1997
but where requests to record have been made in Hong Kong under the Patents Ordinance after its commencement may form
the basis of registration provided the applicant makes a request to record within 18 months.

The applicant will also in due course have to request registration and grant of a standard patent.

(v) Where a UK 1977 Act patent or European patent (UK) is granted within 12 months after 27 June 1997 the applicant
should make a request for registration and grant only within 6 months after the date of grant of the patent.

(vi) For existing UK 1949 Act patent applications, and patents granted in the United Kingdom after 27 June 1997 in respect of
such applications, the request for registration and grant of a standard patent shall be made within: 6 months after the grant of
the patent; or 20 years after the date of filing of the complete specification, whichever is the earlier.

3. Short-term patents

The new Patents Ordinance makes provision for a short-term patent with a maximum term of 8 years from the filing date.
Applications must be made directly to the Registrar and must contain a search report from any of the International Searching
Authorities appointed under Article 16 of the Patent Cooperation Treaty or from any of the designated patent offices.


                                                                                                                            Article 79 – OJ 2004, 179




Registration of European patents (UK) in overseas states or
territories

OJ 2004, 179
Registration of European patents (UK) in overseas states or territories




60
                                                                                                                           Article 79 – OJ 2004, 179



The Intellectual Property Policy Directorate of the United Kingdom Patent Office has supplied the following information
regarding the registration of European patents (UK) in overseas states or territories which register UK national patents1. The
current list replaces the list published in OJ EPO 1997, 433.

The following countries allow the owner of a European patent (UK) to apply for registration within three years from the grant of
the European patent (UK).

Crown dependency
Jersey

Overseas territories
Anguilla
Bermuda
British Virgin Islands
Falkland Islands
Gibraltar

Commonwealth countries
Belize
Brunei Darussalam
Fiji
Gambia
Grenada
Kiribati
Solomon Islands
St. Vincent and the Grenadines
Tuvalu
Uganda
Vanuatu

Applications may be made at any time during the life of the European patent (UK) in:

Crown dependency
Guernsey

Overseas territories
Cayman Islands

Applications must be made within five years of the grant of the European patent (UK) in:

Overseas territories
Turks and Caicos Islands

Applications must be made within two years of the grant of the European patent (UK) in:

Commonwealth country
Western Samoa

In each of the above cases, the term of the patent expires with that of the European patent (UK).




1
    The UK Patent Office has made every effort to ensure that the information given herein is accurate but accepts no legal responsibility for any errors,
    omissions or misleading statements in that information by negligence or otherwise.




                                                                                                                                                             61
Article 87(1) – OJ 1996, 81



                                                                                                                           Article 87(1) – OJ 1996, 81




Notice from the President of the European Patent Office dated
26 January 1996 concerning the priority conferring effect of the
US “provisional application for patent”

OJ 1996, 81
1.   With effect from 8 June 1995 it has been possible to file a provisional patent application in the USA. The “provisional
     application for patent” provided for in 35 USC, section111(b), allows applicants to file a provisional application with
     USPTO under simplified conditions. In order to establish an effective filing date, all that need be submitted are a
     description of the invention and the drawings necessary for an understanding of the invention.

2.   The provisional application cannot as such lead to the grant of a patent as it is not examined and is deemed abandoned
     12 months after filing. It does however give rise to a priority date for a subsequent, regular national application for
     the invention which is filed within 12 months of the date of filing of the provisional application with a reference to the
     provisional application (35 USC section 119(e)).

3.   Since the provisional application meets in substantive terms the requirements the EPC places on a duly filed national
     application in order to establish priority and because the subsequent fate of this filing is immaterial, the EPO, while
     acknowledging the independent decision making competence of the EPO boards of appeal and the Courts of the
     contracting states, recognises the provisional application for patent as giving rise to a right of priority within the
     meaning of Article 87(1) EPC.




62
                                                                                                      Article 93 – OJ 1997, 479



                                                                                                                                               Article 93
                                                                                                                               Article 93 – OJ 1997, 479




Changes in EPO publications

OJ 1997, 479
1. The 1997 fee reform, with its deferral of the date for paying designation fees1, has prompted the Office to change the
system for contracting state designation and to amend some of its publications accordingly.

2. The old system - a combination of express and precautionary designation - has been replaced as from 1 June 1997 by a
system of express designation of all EPC contracting states. This takes the form of a pre-crossed box in Section 32 of
the new EPO Request for Grant form2.

3. The longer period for paying designation fees, together with the new designation system, means that now, when the
application is published, all the contracting states are validly designated; only after publication do applicants decide
which states they actually want to designate, by paying the individual fees (Article 91(4) EPC).

4. So in future, when an application is published in the Register of European Patents, the European Patent Bulletin, or as
an A document, it will indicate as designated all the contracting states which belonged to the EPC on the filing date. Those
for which designation fees are actually paid will be announced in the Register as soon as the Office ascertains this
following expiry of the basic period under Article 79(2) EPC, or in other words about 7 months after publication of the
European search report.

5. About 7 weeks later, these states will then be published as a “positive list” in the Bulletin, together with the publication
number and IPC main class. If multiple applicants designate different states in a single application, this too will be indicated.
The positive list will appear in the Bulletin’s new Section I.5 under the heading “Designations and requests for extension
confirmed through payment of fees by expiry of the period under Article 79(2) EPC”.

6. If designation fees are paid during the periods of grace under Rule 85a EPC, the states in question will be entered
without delay in the Register and in the Bulletin under Section I.12 (“Alterations and corrections”), either in sub-section I.12(6)
or - if multiple applicants designate different states in a single application - in sub-section I.12(9).

7. Information about extension of European patents will be published in the Register (EPIDOS Information Register),
Bulletin and A documents3, in the same way.

8. The positive list will be a permanent part of the Bulletin from mid-November 1997. The first publications under the
new system will appear in December 1997. All EP applications filed as from 1 June 1997 will be published under the new
system.

9. European first filings enjoying the longer period for paying designation fees (ie filing date 1 July 1996 or later) but filed
before 1 June 1997 will be published as hitherto, and will therefore normally indicate the states expressly designated in the
request for grant. Post-publication changes in their designation status will be indicated in the Register and Bulletin
(Section I.5, positive list) once the relevant basic periods expire.

10. The above changes in EPO publications do not affect Euro-PCT applications.

Nor does the longer time limit for paying designation fees under Article 79(2) EPC apply to European divisional applications
and filings under Article 61(1)(b) EPC (Rules 25(2) and 15(2) EPC); their designation status will therefore normally be clear on
publication.




1
    See OJ EPO 1997, 12, 79, 107, 215
2
    See OJ EPO 1997, 251
3
    See also OJ EPO 1997, 115




                                                                                                                                  63
Article 93 – OJ 1997, 115



                                                                                                                           Article 93 – OJ 1997, 115




Notice dated 23 January 1997 concerning the publication of
“extension states” on A and B document title pages and in the
Register and Patent Bulletin

OJ 1997, 115
In response to requests from the public, the EPO will, as from week 9704, indicate any extension states, ie countries not
belonging to the EPC for which the applicant has requested the extension of the protection conferred by the European patent
application or European patent, on the title pages of European patent applications and specifications in the field for the INID
code (84).

Existing extension states are

-    Slovenia (SI), see OJ EPO 1994, 76
-    Lithuania (LT), see OJ EPO 1994, 527
-    Latvia (LV), see OJ EPO 1995, 345
-    Albania (AL), see OJ EPO 1996, 82
-    Romania (RO), see OJ EPO 1996, 601

The extension states will continue to be published in the EPIDOS Information Register until further notice and it is also
planned to include them in Parts I.1 and II.1 of the Patent Bulletin as from April 1997.


                                                                                                                           Article 93 – OJ 1998, 598




Introduction of paragraph numbering in European patent
documents

OJ 1998, 598
In January 1999 the European Patent Office will introduce paragraph numbering in the text of the description in European
patent documents, ie published applications (A documents) and patent specifications (B documents).

The change only applies to the text of the description, as the patent claims are already numbered.

European patent documents are published in a wide range of media: paper, CD-ROMs, on-line databases, and the Internet.
The content of the documents is available in various formats on paper and on-screen: for example, as an official publication,
generally printed in two columns; in paper format or facsimile format on CD-ROM; in MIMOSA format, ie prepared from
mixed-mode data for CD-ROM publication; or as editable text from on-line databases.

At present, users are provided with only one aid - line, column and page numbering - to enable them to locate particular
sections of text in patent documents. This form of numbering is inadequate, since its function in guiding the reader is lost
when the document is transferred from one format to another.

Paragraph numbering, however, is a uniform method of orientation which can be used with all the various formats.

The rules governing paragraph numbering in official printed publications will include the following:




64
                                                                                                    Article 93 – OJ 1987, 242




1. For the production of A and B documents, the paragraph structure will be taken from the patent application (in the text as
filed) or the text on which the decision to grant is based (the so-called Druckexemplar). The document will be printed with all
the paragraphs in the description numbered consecutively.

2. In order to identify the paragraph numbers and avoid any risk of confusion with the text of the description, the numbers will
be enclosed in square brackets and printed in bold.

3. The numbers will be printed as a four-digit sequence using Arabic numerals. Leading noughts will be shown.

4. The numbers will be inserted at the left-hand edge of the text in the first line of each new paragraph, with the text itself
indented to the right.

5. Paragraph numbering supplied by the applicant will be taken over in full. However, the uniform printing specification
described above - four-digit sequence, square brackets, bold type, etc. - will apply in every case.

6. The existing system of numbering lines and columns will remain unchanged.

Example:

     Description

      [0001] This invention relates to the crystalline dihydrate D of 2-methyl-4-(4-methyl-1-
      iperazinyl)-10H-thieno[2,3-b] [1,5] benzodiazepine (referred to herein as “olanzapine”)
 5    The invention more specifically relates to a novel crystalline form which is particularly
      useful for preparing an aqueous olanzapine formulation.
      [0002] The stable crystalline Dihydrate D is particularly important for the commercial
      development of new formulations of the pharmaceutically active olanzapine.
 10 [0003] A novel dihydrate crystal form of olanzapine has now been synthesised and
      characterised which possesses distinct advantages over the previously known forms, ..
The existing method of line numbering has been retained, using smaller type and italics so that any confusion with the
paragraph numbers is ruled out.

The Office is considering incorporating paragraph numbering, after a transitional period, into Rule 35 EPC, “General
provisions governing the presentation of the application documents”. This would ensure that paragraph numbering would be
consistent throughout, from the application as filed to the published A document in all its various forms.

The Office will wait until it has gained enough practical experience with the new system of paragraph numbering before
deciding whether to dispense in the long term with the previous system of line and column numbering in applications and
published documents.


                                                                                                                            Article 93 – OJ 1987, 242




Notice of the EPO dated 30 June 1987 concerning advance
ordering of additional patent specifications

OJ 1987, 242
1.   As soon as a European patent specification has been published the EPO sends the patentee a European patent
     certificate attached to the specification. The applicant may now order additional copies of the patent specification in
     advance and they will be supplied direct from the printers.
     This will simplify the ordering and payment procedure. The additional copies will be available to the requester earlier,
     since it will no longer be necessary to order and pay for single copies separately.

2.   Please note the following:



                                                                                                                               65
Article 93 – OJ 2001, 117




2.1 Requester

      Only the applicant or his representative may order additional copies of the patent specification.

2.2 Ordering and payment

2.2.1           An order must be placed in writing at the time the translations of the claims are filed. A note in the
                accompanying letter to the translations, clearly stating the number of copies required, will suffice.
2.2.2           The fee for additional patent specifications1 (fee code: 48) must be paid at the same time as the fees for grant
                and printing.
2.2.3           Orders and payments cannot be accepted unless the above procedure is followed.

2.3 Address for correspondence

      Additional patent specifications will be sent to the address recorded for the patent application.


                                                                                                                            Article 93 – OJ 2001, 117




New publication system for corrections to A and B documents

OJ 2001, 117
The European Patent Office will introduce its new publication system for corrections to patent applications (A documents) and
patent specifications (B documents) in its entirety at the beginning of 2001. The system is based on WIPO Standard St.50.

Thereby all corrections to A and B documents will be made available on all the publication media of the European
Patent Office and on all associated publication products. This also includes, apart from corrections to documents in paper
form, the following:

- text and image data of the complete documents and abstracts distributed by the EPO on data carrier in formats WIPO
Standard ST.35 (mixed mode) and ST.32 (text only).

This means that further patent information providers, who receive their data from the EPO, can also make corrections
available via their databases.

- esp@cenet®

- the CD-ROM series ESPACE EP-A and EP-B as well as ACCESS-A and ACCESS-B.

In future, corrections to A and B documents will be marked with an individual Kind-of-Document code, as follows:

- A8 for the corrected title page of an A document

- A9 for the complete reprint of an A document

- B8 for the corrected title page of a B document

- B9 for the complete reprint of a B document.

Two new items will be introduced on the title pages of A and B documents:

- “Correction information” (INID code 15)




1
     see Fees schedule “Price per issue”




66
                                                                                                      Article 93 – OJ 2001, 117




Example:

                                       (15)          Correction information:
                                                     Corrected version No.2      (W2A1)
                                                     Corrections, see page(s)    1, 12-15
                                                     INID code(s)                30

This indicates:

- the version of the correction, i.e. whether it is the first, second (as in this example), etc. corrected version of the same
original document,

- the “supplementary correction code” (here, “W2”), followed by the Kind-of-Document code of the original (erroneous)
document (in this example, “A1”).

The supplementary correction code conveys which publication media and/or products are affected by the respective
correction and where consequently corrections are to be expected. “W” indicates corrections which affect all types of media
and products. The number which follows (in this example, “2”) is the version number of the correction.

Until further notice only the W codes will appear on the title pages of the corrected A and B documents. The meaning of the
supplementary correction codes applies to their use in electronic systems for search and document identification. Experts in
search and the further processing of document data are referred to WIPO Standard ST.50, which gives a more detailed
explanation of these codes.

- further information on the corrected parts of text. In the above example, further to the page indications, it is also pointed out
whether bibliographic data are affected, in this case priority details (Inid code 30).

- The date of issue of the correction (INID code 48).

Example:

     (48) Corrigendum issued on: 14.03.2001 Bulletin 2001/11

The date of issue coincides with the notice of the correction in the European Patent Bulletin.

In the body of the A and B documents the corrections will continue to be marked as before.

In the European Patent Bulletin the notices of corrections to A and B documents will continue to be published in Section
III.(3) “Reprints following Corrections”.

With the introduction of the new system, the kind-of-document codes A8 - B9 will also be used here. In addition, details
concerning the issue date of the correction (Inid code 48) and the supplementary correction code, followed by the kind-of-
document code of the original (erroneous) document as well as details as to the affected part of the document will also be
given.

Of particular mention is a special supplementary correction code, DL, to be used where a correction has been mistakenly
announced in an earlier Bulletin and the announcement is now being withdrawn.

Example:

                                              (11)     EP 0 823 987    (51) A01G 9/12

                                              (43)     18.02.1998      (13) A9

                                              (84)     BE DE FR GB

                                              (15)     DLA1

                                                       14.03.2001

The correction foreseen for this date is cancelled.



                                                                                                                                67
Article 93 – OJ 2001, 117




The new system for the publication of corrections will be introduced in publication week 11/2001, ie the first corrections of
A and/or B documents of this kind will be published on 14 March 2001. From this date onwards all corresponding data will be
available also on data carrier and via esp@cenet®.

The CD-ROM series will contain corrections as of mid-2001.

Moreover, it is pointed out that corrections will also be available online on the EPO’s website. Here the affected pages of the
respective current corrections are provided for downloading:

http://www.european-patent-office.org/correct/index.htm




68
                                                                                                 Article 97(6) – OJ 1995, 841



                                                                                                                            Article 97(6) – OJ 1995, 841




Notice dated 1 December 1995 concerning the application of
Article 97(6) EPC - Acceleration of the proceedings

OJ 1995, 841
1.   On 1 January 1996 a new paragraph 6, added to Article 97 EPC, enters into force (see OJ EPO 1995, 741). It reads as
     follows:

     (6) At the request of the applicant, mention of grant of the European patent shall be published before expiry of the time
     limit under paragraph 4 or 5. Such request may only be made if the requirements pursuant to paragraphs 2 and 5 are
     met.

2.   The new provision gives applicants an additional opportunity to accelerate grant of the European patent by meeting all
     the formal requirements for grant at an early date. The time gained may amount to several months, depending on when
     the prescribed request is made.

3.   The request takes effect, and results in the five-month waiting period under Article 97(4) and (5) EPC ceasing to apply,
     only if the applicant has already performed the following acts by the time he makes the request or if he performs them at
     the same time as he makes the request:

     -     indication of approval of the communication under Rule 51(4) EPC,

     -     payment of the fee for grant, including the fee for printing (Rule 51(6) EPC, Article 2, No. 8, Rules relating to
           Fees),

     -     filing of translations of the claims in the two official languages of the EPO other than the language of proceedings
           (Rule 51(6) EPC),

     -     payment of the renewal fees and any additional fees already due (Article 97(2)(c) EPC).

     Furthermore, the request may only be processed if, where appropriate,

     -     fees for any additional claims have been paid (Rule 51(7) EPC) and

     -     a translation of the priority document or the corresponding declaration (Rule 38(4) EPC) has been filed.

     To avoid delaying grant on the basis of Rule 51(9) EPC the applicant is advised, at the same time as filing the request,
     to

     -     pay the next renewal fee if the request is made less than three months before the due date (the fee will be
           reimbursed if the mention of grant is published in the current patent year).

4.   If all these conditions are met, the decision to grant is issued without delay. The applicant may then expect the mention
     of grant to be published (Article 97(4) EPC) within two months. This period is required in any case for internal processing
     by the EPO and for the technical preparations for publication, so that a request under Article 97(6) EPC only has an
     effect if it is made as early as possible (immediately after receipt of the Rule 51(6) EPC communication or, where
     appropriate, on the basis of the Rule 51(4) EPC communication). Reference is made in this connection to point 7 of the
     PACE programme (immediate approval of the Rule 51(4) EPC communication), which enables the communication under
     Rule 51(6) EPC to be notified without delay.




                                                                                                                                  69
Article 98 – OJ 2001, 117



                                                          Article 98 – OJ 2001, 117




New publication system for corrections to A and B documents

- OJ 2001, 117 -
THIS TEXT IS REPRODUCED IN FULL UNDER ARTICLE 93 EPC




70
                                                                                                       Article 99 – OJ 2001, 148



                                                                                                                                                Article 99
                                                                                                                                Article 99 – OJ 2001, 148




Opposition procedure in the EPO

OJ 2001, 148
The following is a revised version of the notice on the opposition procedure before the EPO published in OJ EPO 1989, 417
ff. It reflects the further developments in opposition procedure that have come about in the light of case law and practice.

1. General principles

The EPO's aim is to establish as rapidly as possible, in the interest of both the public and the parties to opposition
proceedings, whether, and to what extent, a patent may be maintained on the basis of an opponent's submissions. In
particular the EPO seeks to achieve this by means of an efficient and streamlined procedure. At the same time, the general
principles governing the procedure before the EPO and in particular the principle of the right to be heard (Article 113(1) EPC)
must be respected.

2. Summary of the procedure

2.1 Procedural steps taken before or after expiry of the opposition period, depending upon the facts of the case:

2.1.1 Communication of a notice of opposition to the patent proprietor, immediately after its filing at the EPO.

2.1.2 Examination of an opposition for admissibility.

2.1.3 Invitation to the opponent to furnish within two months the cited documents or evidence, if not already submitted with the
notice of opposition (see point 4.2 below).

2.2 Procedural steps taken after expiry of the opposition period:

2.2.1 After examination for admissibility or after expiry of the time limit set by the opposition division in a communication under
Rule 56(2) EPC or of the time limit set in the invitation referred to in point 2.1.3 above (whichever is the later), the patent
proprietor is invited to file within a specified period (usually four months) his observations (in particular on the facts, evidence
and arguments submitted) and any amendments to the patent (Rule 57(1) EPC).

2.2.2 The observations and any amendments filed by the patent proprietor are immediately communicated to the opponent
(Rule 57(3) EPC).
If the patent proprietor responds to the notice of opposition by filing amended patent documents, the communication to the
opponent also invites him to comment within a specified period (normally four months; see Guidelines for Examination in the
European Patent Office, D-IV, 5.4, first paragraph). If the proprietor does not file amended documents, his observations are
forwarded for information to the opponent.

If both the patent proprietor and the opponent request oral proceedings, the proprietor's observations - even if amendments
have been made or requested - are sent to the opponent purely for information. The dossier is forwarded immediately to the
opposition division, which will decide how the procedure is to continue (eg fixing a date for the oral proceedings or inviting the
parties to file further observations).

2.3 Subsequent procedure

2.3.1 If, during the course of the procedure, the opposition division considers it necessary to seek further clarification of the
facts or to hear one party's observations on the submissions of another party, the party concerned will be invited to comment
on the submissions within a specified period (normally four months) (see Guidelines D-VI, 3.1).

2.3.2 If oral proceedings are requested by one of the parties or considered expedient by the opposition division itself, a date
for oral proceedings is fixed (for further information on oral proceedings, see point 9 below).

2.3.3 If no oral proceedings are to be held and if no further clarification of the facts is necessary (ie the decision can be based
on grounds on which the parties have had an opportunity to comment (Article 113(1) EPC)), the opposition will be decided on
immediately.




                                                                                                                                   71
Article 99 – OJ 2001, 148




2.4 Closure of proceedings

The proceedings will be concluded in every case with a decision (Article 102 EPC).

If the patent proprietor no longer wishes to maintain the patent, he can request that the patent be revoked. The patent is then
revoked because no text approved by the proprietor is available (Article 113(2) EPC). The same applies if the proprietor
informs the EPO that he surrenders (or abandons or renounces) the patent in respect of all the designated contracting states.

If the opposition is withdrawn, the opposition division can terminate the proceedings by means of a decision (see point 8.2
below).

3. Multiple opponents

If several oppositions to a European patent are filed, they will be considered jointly. The notices of opposition and all further
submissions made by individual parties will be sent or notified to all other parties.

Some important aspects of the procedure are considered in more detail below.

4. The notice of opposition and reply of the proprietor

4.1 Opponents are recommended to use Form 2300 (also available at http://www.european-patent-office.org). The notice of
opposition may also be filed by fax.

Opponents should also file, with the notice of opposition, all relevant papers including copies of new documents cited (even
those available in the EPO documentation), translations of any documents not in an EPO official language, and, wherever
possible, a copy of any further evidence indicated in the notice.

Rule 56(1) EPC stipulates the requirements that must be satisfied within the opposition period.

4.2 Under Rule 55(c) EPC, the notice of opposition must contain an "indication" of the facts, evidence and arguments in
support of the grounds of opposition. The opponent must therefore give at least one ground for opposition under Article 100
EPC and indicate the facts, evidence and arguments adduced in support of the ground(s). If he fails to satisfy this
requirement, the opposition is rejected as inadmissible.

The evidence and arguments indicated may also be submitted subsequently, and the opponent is allowed a short period (two
months) in which to do so (see point 2.1.3 above and Guidelines D-IV, 1.2.2.1(v)).

4.3 The patent proprietor should submit a full response to the opposition(s) within the time limit set (see point 2.2.1 above), ie
all the facts, evidence and arguments in support of his case. If necessary, he should submit amended documents to meet the
grounds of opposition adduced.

If the opponent submits facts that are undisputed and are neither self-contradictory nor contested by the patent proprietor,
these will normally be deemed to be true, even without supporting evidence, and be taken as a basis for the decision without
further examination (Guidelines E-IV, 1.2).

5. Documents which must be communicated to other parties

Such documents are to be filed in a sufficient number of copies (see Rule 36(4) EPC). If documents are filed by telegram,
telex or fax (see notice in OJ EPO 1992, 306), the requisite number of copies must be supplied without delay.

6. Time limits

Time limits fixed by the EPO in opposition proceedings will be extended on request up to a total of six months. Requests for a
longer extension will only be allowed in exceptional circumstances (see notice in OJ EPO 1989, 180). For information on
extensions in cases where a request has been made for accelerated processing, see point 14 below.

7. Facts and evidence not submitted in due time

7.1 The opposition division may disregard facts or evidence which are not submitted in due time by the parties concerned
(Article 114(2) EPC), unless they are of prima facie relevance, ie they would affect the outcome of the decision to be taken.




72
                                                                                                     Article 99 – OJ 2001, 148




7.2 In order that the proceedings progress expeditiously, parties should, in principle, submit all facts, evidence and requests
at the beginning of the procedure. Where this is not possible, the facts, evidence or requests must be submitted at the earliest
opportunity. If relevant facts or evidence are submitted by a party only at a late stage of the proceedings without very good
reason and if, as a consequence, the costs of oral proceedings or taking of evidence are incurred by another party, this may
be taken into account in the apportionment of costs (see point 12 below).

8. Examination by the EPO of its own motion

8.1 As a general rule, examination is confined to the parts of the patent contested by the opponent and the grounds put
forward by him. If the patent proprietor submits amended documents, the amended parts must be checked for compliance
with all the requirements of the Convention. A more extensive examination will only be undertaken by the opposition division
(Article 114(1) EPC) if facts come to its attention which clearly wholly or partially prejudice the maintenance of the patent (see
Guidelines D-V, 2). The opposition is not however an opportunity for the EPO of its own motion to undertake a complete re-
examination of the patent.

8.2 If a sole opposition or all oppositions are withdrawn, the opposition proceedings may be continued by the EPO of its own
motion. This is always the case when the examination necessary for the decision has already been concluded, or can be
concluded without the participation of the opponent(s) (see Guidelines D-VII, 6.3) and if it appears that the patent cannot be
maintained unamended. It is also the case if the proprietor has himself submitted amendments (see Article 113(2) EPC).

9. Oral proceedings

9.1 In many instances the opposition division is already in possession at the written procedure stage of all the facts, evidence
and arguments needed to arrive at a decision. Parties should therefore refrain from requesting oral proceedings as a matter of
course.

9.2 The date on which the oral proceedings are to take place is specified in the summons. Requests to alter this date may
only be considered in exceptional, duly substantiated cases (see notice in OJ EPO 2000, 456).

9.3 With the summons to oral proceedings, the parties also receive a communication setting out, and if need be explaining,
the issues which in the opposition division's view must be discussed at the oral proceedings (see Guidelines D-VI, 3.2, and E-
III, 5), where applicable making suitable reference to certain parts of the file. The summons will also fix a final date for
submitting observations and amendments (Rule 71(a) EPC).

9.4 The subject of the oral proceedings are the crucial issues listed in the communication referred to in point 9.3 above, but
the parties are not confined to those issues alone, provided that their additional submissions are relevant.

9.5 In oral proceedings, the opponent generally speaks first and the proprietor second. Each party is usually given two
opportunities to speak, the first to state his case and the second to reply to the other party. The opposition division questions
the parties to clarify the facts and the legal position. At the end of the oral proceedings, usually after a brief adjournment for
deliberation, the chairman normally pronounces the decision of the opposition division. A brief statement of grounds may also
be given. This decision is notified to the parties in writing without delay (Rule 68(1), second sentence, EPC).

9.6 Oral proceedings are generally concluded by a decision based on the parties' final submissions and requests voiced
during the oral proceedings. To this end, the representatives of the parties should, in principle, come to the oral proceedings
prepared to consider possible fall-back positions and armed with the authority to take a stand on behalf of their clients on any
developments which may occur in the course of the proceedings.

9.7 If new facts or evidence (eg a new document) are submitted for the first time at the oral proceedings, they are to be
regarded as late-filed (Rule 71a EPC) and will only be considered if they are of such prima facie relevance that the opposition
division, in the exercise of its discretion, admits them under Article 114(2) EPC. In such cases, the proceedings may be briefly
interrupted to enable the other parties to study the new submission. If it is unreasonable to expect the other parties to be able
to formulate an adequate response, the proceedings must be continued in writing.

10. Minutes of oral proceedings

The minutes of the oral proceedings, where appropriate together with the decision, are sent to all the parties as soon as
possible.




                                                                                                                               73
Article 99 – OJ 1998, 361




11. Hearing of witnesses

The evidence of a witness will be heard, if it is offered and if the division considers it necessary (Rule 72 EPC). The
opposition division will normally always allow (and may itself require) oral evidence to be given where a contentious issue is to
be supported by the evidence of witnesses, as for example in the case of prior use. The testimony of a witness, like any other
form of evidence, is subject to the unfettered consideration of the opposition division (see Guidelines E-IV, 1.2 and 4, and
"Case Law of the Boards of Appeal of the European Patent Office", VI-J, 4 and 5).

12. Costs

12.1 Each party generally bears its own costs. Under Article 104(1) EPC the costs may be otherwise apportioned "for reasons
of equity". This however is limited to "costs incurred during taking of evidence or in oral proceedings", which means for
example that the patent proprietor has to bear the costs involved in replying to a notice of opposition even if the opposition
subsequently proves to be wholly unfounded.

12.2 If a party has exercised delaying tactics or conducted itself unreasonably, the EPO may decide on a different
apportionment of costs. Examples of the apportionment of costs in special cases are given in the Guidelines D-IX, 1.4.

13. Intervention of the assumed infringer

13.1 A third party may intervene in opposition proceedings, under the conditions stipulated in Article 105 EPC, as long as they
have not been concluded (see Guidelines D-VII, 7). If the intervention is properly filed, it is treated as an opposition. This
means that regardless of the stage at which he becomes a party to the proceedings the intervener enjoys essentially the
same rights as any other party.

13.2 If the intervener introduces into the proceedings new facts and evidence which appear to be crucial, these must be taken
into consideration.

14. Accelerated processing of oppositions

In cases where an infringement action in respect of a European patent is pending before a national court of a contracting
state, a party to the opposition proceedings may, at any time, request accelerated processing (see notice in OJ EPO 1998,
361).

The proceedings can only effectively be accelerated, however, if the parties make their submissions promptly and in full and
strictly adhere to the time limits and dates set by the EPO. In such cases, requests to extend time limits over and above the
normal four-month period can only be granted in exceptional, duly substantiated cases.


                                                                                                                             Article 99 – OJ 1998, 361




Notice from the President of the European Patent Office dated
19 May 1998 concerning accelerated processing of oppositions
where infringement proceedings have been instituted

OJ 1998, 361
1. In cases where an infringement action in respect of a European patent is pending before a national court of a contracting
state a party to the opposition proceedings may request accelerated processing. The request may be filed at any time. It must
be filed in written reasoned form. The Office will then make every effort to issue the next procedural action (eg.
communication, summons to oral proceedings) within three months of receipt of the request or where the request is already
filed within the opposition period, within three months after receipt of the patent proprietor’s response to the notice of
opposition (whichever is the later).



74
                                                                                                     Article 99 – OJ 1998, 361




2. In addition, the EPO will also accelerate the processing of the opposition if it is informed by the national court or competent
authority of a contracting state that infringement actions are pending.

3. However, the EPO has to rely on the co-operation of the parties to the proceedings who are expected in particular to make
their submissions promptly and in full and in any case strictly to adhere to the time limits set by the EPO for replying to
communications or commenting on written submissions from the other parties. Requests to extend time limits over and above
the normal four-month period can only be granted in exceptional, duly substantiated cases.




                                                                                                                               75
Article 106 – OJ 1998, 362



                                                                                                                                                Article 106
                                                                                                                                Article 106 – OJ 1998, 362




Notice from the Vice-President Directorate-General 3 dated
19 May 1998 concerning accelerated processing before the
boards of appeal

OJ 1998, 362
Parties with a legitimate interest may ask the boards of appeal to deal with their appeals rapidly. The boards can speed up an
appeal as far as the procedural regulations allow.

Requests for accelerated processing must be submitted to the competent board either at the beginning of or during
proceedings. They should contain reasons for the urgency together with relevant documents ; no particular form is required.

This option is also available to the courts and competent authorities of the contracting states.

By way of example, the following circumstances could justify an appeal being dealt with particularly rapidly:

-    where infringement proceedings have been brought or are envisaged
-    where the decision of potential licensees of the patent in suit, that is the patent which is the subject of an appeal, hinges
     upon the outcome of the appeal proceedings
-    where an opposition which is to be given accelerated processing (see Notice of the President of the EPO dated
     19 May 1998, OJ EPO 1998, 361) has been made the subject of an appeal.

By way of exception, the board may accelerate the procedure ex officio, for example in view of the disadvantages which could
ensue from the suspensive effect of the appeal in the case in question.

Whether or not a particular case is regarded as urgent will depend on the nature of the case and not merely on whether
accelerated processing is requested by the parties.

If, in view of the circumstances, the reasons given and the documents provided, the board decides to grant accelerated
processing, this will involve in particular giving the appeal priority, and/or - with due respect for the parties’ right to be heard
and the fair administration of justice - adopting a strict framework for the procedure, for example concerning the time limits
available before the final decision.




76
                                                                                                        Article 116 – OJ 1986, 63



                                                                                                                                                 Article 116
                                                                                                                                  Article 116 – OJ 1986, 63




Notice of the Vice-Presidents Directorates-General 2 and 3
dated 25 February 1986 concerning sound recording devices in
oral proceedings before the EPO

OJ 1986, 63
In order to avoid misunderstandings, parties to oral proceedings and their representatives are hereby informed that the
following rule will in future apply.

At oral proceedings under Article 116 EPC, whether before an Examining Division, an Opposition Division or a Board of
Appeal, no person other than an EPO employee is allowed to introduce any kind of sound recording device into the hearing
room. Such a rule is in accordance with the general practice in the Member States of the European Patent Organisation.


                                                                                                                                 Article 116 – OJ 2000, 456




Notice of the Vice-Presidents Directorates-General 2 and 3
dated 1 September 2000 concerning oral proceedings before
the EPO

OJ 2000, 456
1. The current practice for fixing the date of oral proceedings, both before the departments of first instance and before the
boards of appeal, was published in OJ EPO 1997, 469.

1.1 Experience has shown that the present practice of proposing a first date and an alternative one is not satisfactory. In view
of the large proportion of appeal cases in which oral proceedings are requested, current practice gives rise to complex
organisational problems involving the availability in advance of rooms and facilities, and of the legally qualified members of
the boards of appeal (who, as a rule, serve on several boards) for the fixed dates. Proposing a first date and an alternative
date for oral proceedings means that for the two dates the use of the meeting room is blocked for about two weeks during this
stage of summoning the parties. No other reservation of the respective room is possible during this period. The same is true
for the availability of the legally qualified members. If the proposed dates are not suitable for the parties, the complicated co-
ordination process must re-start. Dates near to the originally proposed ones have by then often been attributed to other
cases, so that further delay in appointing oral proceedings in the case in question is caused.

1.2 Cancellations of oral proceedings at a later stage, in particular, if requested shortly before the fixed date, result, as a rule,
in a considerable prolongation of the appeal proceedings. Another date must be found where all the necessary parameters
mentioned above can be met. It is seldom possible to fill gaps since the time period for summoning to oral proceedings is at
least two months, unless the parties waive the time limit.

1.3 Further it is to be noted that parties occasionally do not feel obliged to indicate any reasons or to submit sufficiently
substantiated reasons as to why they cannot agree to the proposed dates.

1.4 Similar problems arise in proceedings before the departments of first instance.

1.5 In general, the present system impedes the aim of streamlining procedures before the EPO.




                                                                                                                                     77
Article 116 – OJ 1994, 583




2. On the initiative of the boards of appeal, in co-operation with DG 2 and after discussion in the Standing Advisory
Committee before the EPO (SACEPO), it has been decided to implement as from 1 November 2000 a new procedure for
fixing the dates of oral proceedings:

2.1 The departments of first instance and the boards of appeal will as of 1 November 2000 fix one single date for oral
proceedings. The pre-announcement of the date by phone or fax will no longer be made.

2.2 Oral proceedings appointed by the EPO will be cancelled and another date fixed at the request of a party only if the
party concerned can advance serious reasons which justify the fixing of a new date. The request to fix another date shall
be filed as soon as possible after the grounds preventing the party concerned from attending the oral proceedings have
arisen. The request shall be accompanied by a sufficiently substantiated written statement indicating these reasons.

2.3 Serious substantive reasons to request the change of the date for oral proceedings may be, for instance:

- a previously notified summons to oral proceedings of the same party in other proceedings before the EPO or a national
court,

- serious illness,

- a case of death within the family,

- the marriage of a person whose attendance in oral proceedings is relevant,

- military service or other obligatory performance of civic duties,

- holidays which have already been firmly booked before the notification of the summons to oral proceedings.

2.4. Grounds which, as a rule, are not acceptable are, for instance:

- a summons to oral proceedings before the EPO or a national court notified after the summons in the relevant proceedings,

- excessive work pressure.

2.5 Every request for fixing another date for oral proceedings should contain a statement why another representative within
the meaning of Articles 133(3) or 134 EPC cannot substitute the representative prevented from attending the oral
proceedings.


                                                                                                                        Article 116 – OJ 1994, 583




Interpretation in oral proceedings

OJ 1994, 583
The EPO requests representatives, wherever possible, to refrain from requesting simultaneous interpreting facilities in oral
proceedings before Opposition Divisions, in order to reduce costs.

A copy of EPO Form 2043 which contains important information on oral proceedings in future, will be sent by Fax to parties
when the Office arranges a date for oral proceedings in the opposition procedure.

A copy of EPO Form 2043 will also be appended to the summons to oral proceedings (EPO Form 2310) if the requirements
for simultaneous interpreting facilities have not already been established by the date of the summons.




78
                                                                                                  Article 116 – OJ 1995, 489



                                                                                                                           Article 116 – OJ 1995, 489




Communication from the Vice-President, Directorate-General 3
of the European Patent Office, dated 19 May 1995 concerning
the obligation to give notice pursuant to Rule 2(1), first
sentence, EPC in proceedings before the boards of appeal (use
of an alternative official language in oral proceedings)

OJ 1995, 489
In oral proceedings before the European Patent Office a party may use one of the Office’s other official languages in lieu of
the language of the proceedings provided that he gives notice in good time in accordance with Rule 2(1), first sentence, EPC
or makes provision for interpreting into the language of the proceedings.

In proceedings before the board of appeal this obligation to give notice also applies if the party has lawfully used an
alternative official language in oral proceedings before the department of first instance (see decision T 34/90, OJ EPO 1992,
454).


                                                                                                                           Article 116 – OJ 2006, 585




Updated information concerning interviews and oral
proceedings to be held as a video conference

OJ 2006, 585
Applicants and their representatives can request that an interview or oral proceedings before an examining division be held as
a video-conference.

1. How to request a video-conference

Any request for an interview or oral proceedings to be held as a video-conference should be filed with the EPO in the same
way as any other request concerning a pending European patent application. In particular, the number of the application
concerned has to be indicated.

Oral proceedings held by video-conference are equivalent to oral proceedings held in the traditional manner on the premises
of the EPO. Consequently a request for further oral proceedings before the same department (whether by video-conference
or any other form) may be rejected where the parties and the subject of the proceedings are the same (Article 116(1) EPC).
As of now, the practice of requiring that the applicant file a waiver declaration is abandoned. It is however emphasised that
the decision to accept the request for video-conference oral proceedings falls under the discretion of the examining division
(see point 2).

2. How the EPO will deal with a request for a video-conference

The request will be forwarded to the primary examiner in charge of the corresponding file for decision. In the case of oral
proceedings to be held as a video-conference, the competence for the decision lies with the examining division. The first
examiner or the examining division, as the case may be, has a discretionary power and will, on a case by case basis, decide
on the suitability of video-conferencing. If the request cannot be allowed, the person making the request will be informed by a
communication indicating the reasons for the refusal. No appealable decision will be issued on the matter.




                                                                                                                               79
Article 116 – OJ 2006, 585




If the request is allowed, the person making the request will be contacted in order to arrange the date and time of the video-
conference, which has to be on a working day within EPO working hours. This will be confirmed by a written communication
or fax containing any further appropriate information. In parallel, the internal procedure for reserving video-conference studios
will be followed.

3. Equipment required

Please note that the EPO video-conference studios are for internal use only and therefore are not available for the applicant’s
or representative’s own use.

The EPO video-conference studios employ ISDN technology (H.261/H.320 ITU compatible, channel bonding or H. 244
Videocoding CIF H. 261, Audiocoding G.722, max. transmission rate 768 Kbit/s using 12 channels). Each studio has a fax
machine; a document camera with zoom function can be made available on request. Video-conferences must be carried out
at a transmission rate of at least 256 Kbit/s, but at least 384 Kbit/s is preferred. The applicant or representative has to ensure
that his video-conference equipment will meet the minimum transmission rate.

4. Location of the video-conference studios of the EPO

Examining divisions have video-conference studios at the EPO in Munich, The Hague and Berlin for European patent grant
proceedings. The video-conference dial-up number to be used by the applicant will be indicated in the communication
allowing the video-conference.

5. Costs

The EPO does not require the payment of a specific fee for holding an interview or oral proceedings as a video-conference.
The person making the request will have to bear the transmission costs, and will be asked by the EPO to dial the indicated
number of the video-conference studio on the date and at the time which have been agreed.




80
                                                                                                        Article 127 – OJ 2006, 535



                                                                                                                                                   Article 127
                                                                                                                                   Article 127 – OJ 2006, 535




Notice from the European Patent Office dated 15 August 2006
concerning the inspection of files and online consultation of
the European Patent Register

OJ 2006, 535
                                            ®
In a further development to its epoline range, the EPO has consolidated its patent information services by combining
electronic file inspection and the European Patent Register to give online access to its store of patent information via a single
service known as Register Plus.

Users wishing to inspect the files of published European patent applications or consult the Register online can access
Register Plus under

http://www.epoline.org/portal/public/registerplus

In addition, Register Plus also offers a direct link to esp@cenet® and access to the EPO's Open Patent Services (patent
family and INPADOC legal status data).

1. Online file inspection via Register Plus

1.1 Register Plus provides direct access to the files of all published European patent applications and patents stored in
electronic form.

1.2 If inspection is requested of a file not yet stored in electronic form, as a rule the file will be made available online within ten
working days of entry of the application or publication number, unless it has already been destroyed (Rule 95a (4) and (5)
EPC). This does not apply to files for which oral proceedings are imminent or have recently taken place. Entering a valid
application or publication number is equivalent to requesting a file inspection. There is no need for a separate written request.

1.3 With the advent of free online file inspection, as a rule it is no longer possible to inspect the paper files on EPO premises.

1.4 Online file inspection is available from 08.00 to 18.00 hrs CET.

2. File inspection on paper copies

2.1 If file inspection on paper copies is requested, an administrative fee of EUR 35 is payable in advance. As a rule, if more
than 100 pages have to be produced, the EPO provides an electronic storage medium holding a copy of the file. If paper
copies are expressly requested instead, the EPO charges an additional EUR 0.35 for each page in excess of 100. The invoice
for the additional charge is sent together with the file inspection documents.

2.2 Users should note that it normally takes at least four weeks for the requested electronic storage media or paper copies to
be made available.

3. Online access to the European Patent Register

3.1 Users of Register Plus can access the procedural data on European applications and patents, as well as the data on all
PCT applications designating the EPO.

3.2 Register Plus contains data on all published European applications and international applications designating the EPO. As
well as this bibliographic data, it also provides information about the grant procedure and the legal status of individual
applications, from the date of publication to the grant of the patent, and about any opposition or appeal proceedings. In
addition to the data entered in the European Patent Register (Article 127, Rule 92 EPC), Register Plus also includes
application and procedural data previously also accessible by way of the Online European Patent Register. Any data which
are not part of the European Patent Register are not published in the European Patent Bulletin under Article 129(a) EPC.

3.3 The Online Register is normally available 24 hours a day, except for a short break between 05.00 and 05.10 hrs CET to
refresh the data.



                                                                                                                                       81
Article 127 – OJ 2003, 23




4. Access to patent family and INPADOC data

Register Plus also offers users direct access to INPADOC and patent family data. These too are available around the clock
except for brief updating breaks (05.00 to 06.00 hrs CET).

5. Monitoring the European Patent Register (WebRegMT)

Users of the WebRegMT service (OJ EPO 2004, 62) who elect to receive e-mail alerts of changes in the European Patent
Register are now (since 14 August 2006) diverted automatically to Register Plus by the links in the e-mails.

6. Costs and access

Register Plus is a free, public service.

7. Enquiries about Register Plus

These are answered by EPO Procedural and Technical Support. Contact details:

European Patent Office
Patentlaan 2
NL-2288 EE Rijswijk
Tel.: +3170 340 4500
Fax: +3170 340 4600
e-mail: support@epo.org
Internet: www.epoline.org
EPO Procedural and Technical Support is available from Monday to Friday, 08.00 to 18.00 hrs CET.

8. Previous notices superseded

With effect from 5 September 2006, the EPO's notices dated 28 May 2001 about internet access to the Online European
Patent Register (OJ EPO 2001, 249) and dated 6 June 2003 concerning the inspection of files (OJ EPO 2003, 373) are
superseded.


                                                                                                                         Article 127 – OJ 2003, 23




Notice from the European Patent Office dated 18 December
2002 concerning a new tool for use with the European Patent
Register online

OJ 2003, 23
As part of the epoline® project, the Office has expanded the Online European Patent Register service to include a new Java
application known as WebRegPro. WebRegPro allows users to compare data from user-defined lists of application and
publication numbers downloaded from the European Patent Register and identify changes in the procedural data relating to
the applications on the list.

WebRegPro has been developed to allow users to monitor the status of selected EP and Euro-PCT patent applications and to
track procedural changes by comparing concatenated text files downloaded on different days.

With the introduction of this latest development, the Online European Patent Register now provides all the function that were
available via the X.25 service, including the display of the most recent event in the European grant procedure and the event
history. In addition, WebRegPro allows users to download bulk data in order to detect changes which have occurred in the
European patent grant procedure.



82
                                                                                                  Article 127 – OJ 2003, 69



                                                  ®
WebRegPro is free of charge and works with Windows operating systems only.

WebRegPro can be ordered from the epoline® Web site at www.epoline.org. Additional information is available under

www.epoline.org/webregpro.htm.

Information from the Online European Patent Register can be obtained by telephone from epoline® Customer Services:

epoline® Customer Services

European Patent Office

Patentlaan-2 NL - 2288 EE Rijswijk

Tel.: (+31-70) 340 4500

Fax: (+31-70) 340 4600

e-mail: epoline@epo.org

Internet: www.epoline.org

epoline® Customer Services can be contacted from Monday to Friday, 08.00 to 18.00 hrs.


                                                                                                                          Article 127 – OJ 2003, 69




Notice from the European Patent Office dated 27 February 2003
concerning use of the Online European Patent Register

OJ 2003, 69
As part of its epoline® project, the European Patent Office offers users access to the Online European Patent Register via the
Internet, http://www.epoline.org/register.htm (OJ EPO 5/2001, 249-250).

Thanks to the introduction of a new software tool known as WebRegPro (OJ EPO 1/2003, 23), the Online European Patent
Register now provides all the functionalities available via the EPIDOS Register X.25 service (OJ EPO 8/1997, 381-384 and
OJ EPO 12/1997, 576). This service will therefore cease to be available to the public with effect from 31 March 2003.

In future, customers should access the free Online European Patent Register via the Internet and use the WebRegPro
application to download and compare Register data.

Access to deposit accounts (DEPAC-system) via the X.25 service is unaffected and this service will be maintained until
further notice

(http://www.european-patent-office.org/epidos/depac_epr.htm).

WebRegPro runs under Windows® operating systems only and may be ordered free of charge from the epoline® Website
(http://www.epoline.org/epoline/webregpro/webregpro_en.htm).

Further information can be obtained from:

epoline®-Customer Service
European Patent Office
Patentlaan-2 NL - 2288 EE Rijswijk
Tel.: (+31-70) 340 4500



                                                                                                                             83
Article 127 – OJ 1995, 235




Fax: (+31-70) 340 4600
e-mail: epoline@epo.org
Internet: www.epoline.org
epoline®-Customer Service can be contacted from Monday to Friday 08.00 to 18.00 hrs.


                                                                                                                          Article 127 – OJ 1995, 235




Free subscription to the on-line services of the European
Patent Office

OJ 1995, 235
The European Patent Register on-line contains bibliographic data and legal status data on published European and Euro-PCT
patent applications. The file currently contains 600000 records and is updated daily. Each year, 60000 records are added.

The EPO can be accessed via the national data network or by dialling direct through the public telephone system. Accessing
times have been extended and the transmission speed increased.

The information on offer has been considerably expanded and the EPIDOS information register now tells you even more
about the legal status of European and international patent applications.

In addition to the entries contained in the European Patent Register (Rule 92 EPC) the following data are available in the
EPIDOS information register:

1. Bibliographic data relating to all published PCT applications designating EPC contracting states and not yet in the
national phase;

2.   Filing date of demand for international preliminary examination (PCT);

3. Date of despatch of communications of the examining division under Article 96 and Rule 51(2) EPC, with time limits and
dates of applicant’s responses;

4.   Date of despatch of communications of the examining division under Rule 51(4) and (6) EPC;

5. Date of despatch of decisions of the Receiving Section under Article 91(3) EPC and of the examining division under
Article 97(1) EPC, with date of final legal effect;

6. Date on which the European application is deemed to be withdrawn (including date of despatch of the communication)
and date of receipt of last request for further processing or re-establishment of rights;

7. Expected date of grant of the European patent (available approximately six weeks before publication in the European
Patent Bulletin);

8. Date of despatch of communications of the opposition division under Article 101(2) and Rule 58(1) EPC, with time limits
and dates of responses;

9. Date of despatch of decisions of the opposition division under Article 106(3), with date of final legal effect (where
applicable);

10. Date of despatch of decisions of the opposition division under Article 102(3) EPC, with date of final legal effect;

11. Date of despatch of communications of the opposition division under Rule 58(5) EPC;




84
                                                                                                   Article 127 – OJ 1997, 576




12. Date of despatch of the decision of the opposition division to revoke the European patent or to reject the opposition, with
date of final legal effect;

13. Date of despatch of the notification of termination of opposition proceedings after lapse of the patent in all designated
states (Rule 60 EPC), with date on which loss of rights ensued;

14. Date of filing of an appeal, information about interlocutory revision under Article 109(1) EPC, date of receipt of the appeal
by the board of appeal and date of oral proceedings;

15. Date of payment of renewal fees, with indication of year;

16. Location of the paper file, with fax extension for requests for file inspection;

17. Language of proceedings;

18. Date of legal effect of registered licences and other rights;

19. Date of transfer of rights, names of former and present applicant(s)/proprietor(s);

20. Extension of European patent applications and patents (currently Slovenia and Lithuania);

21. Current EPO procedural fees schedule in the currencies of the Contracting States and advance notification of any fee
changes;

22. Miscellaneous messages of interest to all users of the European patent system.


                                                                                                                             Article 127 – OJ 1997, 576




Register of European Patents on-line: further user possibilities

OJ 1997, 576
From December 1997 a new service is available to users of the on-line EPIDOS Register at the European Patent Office.
Holders of deposit accounts provided by the European Patent Office can now obtain up-to-date information on the balance of
their deposit account from this on-line service.

In order to gain access to this service, a written request has to be filed at the European Patent Office, Vienna sub-office
(address: European Patent Office, EPIDOS Register helpdesk, attn. Mrs Elena Sereix, Schottenfeldgasse 29, A-1072 Vienna;
fax (+43-1) 521 26 32 92; e-mail: sereix@epo.e-mail.com).

This request should indicate:
- the user identification,
- the EPO deposit account number, and
- an additional password if such protection is required (eg where the Register is used by several persons under the same
      user identification).

Deposit account holders, who do not yet have access to the EPIDOS Register on-line, may obtain a one-month-free trial.
Requests should be sent to the address indicated above.

epoline®-Customer Services
European Patent Office

Patentlaan 2
NL-2288 EE Rijswijk
Tel: (+31-70)340 45 00



                                                                                                                                 85
Article 127 – OJ 2005, 326




Fax: (+31-70) 340 46 00
Internet: epoline@epo.org


                                                                                                                         Article 127 – OJ 2005, 326




Notice from the European Patent Office dated 1 March 2005
concerning Register Plus, the new way of accessing the Online
European Patent Register and Online Public File Inspection

OJ 2005, 326
Following the successful official launch of Register Plus on 23 November 2004 (OJ EPO 2005, 49), from 1 July 2005 access
to the EPO's Online European Patent Register and Online Public File Inspection services will be exclusively via Register Plus
- which is also linked to esp@cenet® and gives access to data from the Open Patent Services (patent family information and
INPADOC legal status data).

Like the Online European Patent Register and Online Public File Inspection, Register Plus is a free public service. Unlike
them, it may also be accessed using a smart card or a username plus password; these however are not essential.

To access Register Plus, go to http://www.epoline.org.

For more information, contact:

EPO Procedural and Technical Support
European Patent Office
Patentlaan 2
NL-2288 EE Rijswijk
Tel.: (+31-70) 340 4500
Fax: (+31-70) 340 4600
e-mail: support@epo.org
www.epoline.org
Open: Monday to Friday, 08.00 to 18.00 hrs.

                                                                                                                         Article 127 – OJ 2006, 204




Notice from the European Patent Office dated 1 February 2006
concerning new functionalities in the Online Fee Payment
service

OJ 2006, 204
The Online Fee Payment service, which was introduced in 2003, allows holders of deposit accounts with the EPO to manage
their accounts online. This includes paying fees and viewing transactions and payment orders. The service can be accessed
via the secure, user-specific My.epoline® portal.




86
                                                                                              Article 127 – OJ 2006, 204




Since December 2005 users of Online Fee Payment have been able to use the service's new payment plan function to check
the amount of fees due within the next 10, 14, 30 or 40 days. This function allows users who have issued the EPO with
automatic debit orders to ensure that their accounts contain sufficient funds. The payment plan is linked to the automatic
debiting procedure.

Online Fee Payment now also offers more flexibility. Portal administration allows users to decide who has access to the
payment plan, who can pay fees and who can view accounts. For users entitled to a fee reduction, the system automatically
calculates the reduction.

Other enhancements include harmonisation of the electronic and paper statements issued by the EPO, improved layout, and
the availability of the schedule of fees in the publicly accessible part of the epoline® website.

To use Online Fee Payment you need

(a) a deposit account with the EPO and

(b) a smart card and smart card reader.

You can obtain both online and free of charge via the epoline® website at www.epoline.org.

More information on Online Fee Payment, including a brochure, can be found in the products and services section at
www.epoline.org.

For further questions, please contact

EPO Procedural and Technical Support
European Patent Office
Patentlaan 2
NL-2288 EE Rijswijk
Tel.: +31 70 240 4500
Fax: +31 70 240 4600
e-mail: support@epo.org
www.epoline.org
Monday to Friday, 08.00 to 18.00 hrs




                                                                                                                       87
Article 127 – OJ 2006, 446



                                                                                                                                                Article 127 – OJ 2006, 446




Notice from the European Patent Office dated 3 July 2006
concerning the EPO Online Multipay Tool for preparing batch
debit orders when using Online Fee Payment

OJ 2006, 446
In June 2006 the European Patent Office launched the free EPO Online Multipay Tool for use with the Online Fee Payment
service in My.epoline®1.

The new software allows users to prepare batch debit orders offline when paying fees for several patent applications. The
EPO Online Multipay Tool automatically generates the necessary XML files which the user can upload later when making
batch payments via the Online Fee Payment service.

The files generated can be processed by different employees of the same firm or patent agent's office. Existing Excel files (in
CSV format) can be converted into XML. Users can also export files in CSV format to their computer network so that they can
access them again at a later stage.

You can download the EPO Online Multipay Tool free of charge via the epoline® website at www.epoline.org - "Download
centre" - "Software".

More information on Online Fee Payment and the EPO Online Multipay Tool is available at www.epoline.org - "Products and
services" - "Online Fee Payment".

For further questions, please contact

EPO Procedural and Technical Support
European Patent Office
Patentlaan 2
NL-2288 EE Rijswijk
Tel.: (+31-70) 340 4500
Fax: (+31-70) 340 4600
e-mail: support@epo.org
www.epoline.org
Monday to Friday, 08.00 to 18.00 hrs




1
     See Annex B.1 to the Arrangements for deposit accounts (ADA), Supplement No. 2 to OJ EPO No. 1/2005, 37-39, and Notice from the European
     Patent Office dated 1 February 2006 concerning new functionalities in the Online Fee Payment service, OJ EPO 2006, 204.




88
                                                                                                    Article 129 – OJ 1983, 459



                                                                                                                                              Article 129
                                                                                                                              Article 129 – OJ 1983, 459




Changes in the European Patent Bulletin

OJ 1983, 459
With effect from the first weekly issue in 1984 (date of publication: 4 January 1984), the following changes will be made in the
European Patent Bulletin:

1.    “Section 1.2” will become “Section 1.2(1)”; its heading and the bibliographic data given will remain the same as at
      present.

2.    There will be a new “Section 1.2(2)” consisting of the following heading and bibliographic data:

      “International applications not supplied to the European Patent Office in one of its official languages (Article 158(2), 1st
      sentence), arranged by PCT publication number

      (87)    PCT publication number
      (51)    International Patent classification
      (86)    PCT application number
      (87)    PCT Gazette issue number and date
      (21)    (European) application number”.

3.    “Section II.6 “ will become “Section 11.6(1)”; its heading and the bibliographic data given will remain the same as at
      present.

4.    There will be a new “Section II.6(2) “ consisting of the following heading and bibliographic data:

      “No opposition filed
      (11) Publication number
      (51) International patent classification
      (45) Date of publication of the patent specification”.

5.    Section II.12 will be supplemented as follows:

      “Rectification of patent specifications
      (11) Publication number
      (51) International patent classification
      (45) Date of publication of the patent specification
      Date of decision on rectification”.


                                                                                                                               Article 129 – OJ 1986, 63




Amendments and additions to the European Patent Bulletin

OJ 1986, 63
The following amendments and additions will be made to the European Patent Bulletin as from the eighth publication week
1986 (date of publication: 19 February 1986)1:

1. Section I.6(2)
This Section will now also include international search reports published separately. The heading will therefore be
supplemented as follows:
1
     OJ 2/1986, p. 61.




                                                                                                                                  89
Article 129 – OJ 1986, 63




“Separate publication of the European or international search report”.

2. Section I.6(3)
There will be a new Section I.6(3) consisting of the following heading and bibliographic data:
“Drawing up of a supplementary European search report
(11) Publication number
(51) International patent classification
(87) PCT publication number
Date of despatch”.

3. Section I.7
Section I.7 will become Section I.7(1); its heading and bibliographic data will remain the same.

4. Section I.7(2)
There will be a new Section I.7(2) consisting of the following heading and bibliographic data:
“Date of despatch of first examination report
(11) Publication number
(51) International patent classification
Date of despatch”.

5. Section I.8(4)
Section I.8(4) will be amended as follows:
“Date of receipt of request for re-establishment of rights
(11) Publication number
(51) International patent classification
Date of receipt of request”.

6. Section I.8(5)
There will be a new Section I.8(5) consisting of the following heading and bibliographic data:
“Date and purport of decision on request for re-establishment of rights
(11) Publication number
(51) International patent classification
Date of decision
Re-establishment granted or refused”.

7. Section II.1
The full bibliographic data will be supplemented by the publication code “B1”.
In the legend the following clarification will be added with respect to INID code 84:
“(84) Designated contracting States for which the European patent is granted”.

8. Section II.7(3)
The bibliographic data will be supplemented as follows:
“(11) unchanged
(51) unchanged
(84) Designated contracting States for which the European patent is revoked
Date of revocation decision (unchanged)”.

9. Section II.7(4)
The full bibliographic data will be included as in Section II(1). The publication code “B2” will also appear. In the legend to this
Section the INID code (84) will be supplemented after “Designated Contracting States” by the words “for which the European
patent is maintained”.
The reference to the “Date of decision maintaining the European patent as amended” will remain the same.

10. Section II.7(6)
There will be a new Section II.7(6) consisting of the following heading and bibliographic data:

“Termination of the opposition procedure
(11) Publication number
(51) Internal patent classification
Date of decision”.




90
                                                                                                  Article 129 – OJ 1988, 37



11. Section II.8
Section II. will become Section II.8(1) consisting of the following data:
“Date of receipt of request for re-establishment of rights
(11) Publication number
(51) International patent classification
Date of receipt of request”.

12. Section II.8(2)
There will be a new Section II.8(2) consisting of the following heading and bibliographic data:
“Date and purport of decision on request for re-establishment of rights
(11) Publication number
(51) International patent classification
Date of decision
Re-establishment granted or refused”.


                                                                                                                         Article 129 – OJ 1988, 37




Amendments and additions
to the European Patent Bulletin

OJ 1988, 37
The following amendments and additions will be made to the European Patent Bulletin as from the sixth publication week in
1988 (date of publication: 10 February 1988):

Section I.1
1. The EPO will in future publish only those Euro-PCT applications validly entering the European phase.
2. The publication code “A 1” or “A 2” will be added to the two-line supplementary class references.
3. “Additional information symbols”, separated from “invention symbols” by a double oblique stroke, will be added to the
    classification symbols.

Sections I.2 (2) and I.8 (3)
1. Particulars of applications deemed to be withdrawn, previously published under Section I.8 (3), will from now on be
    published under Section I.2 (2) if they relate to international applications that have not entered the European phase.
2. Section I.2 (2) will be headed “International applications not entering the European phase”.
3. “Date on which the international application was deemed to be withdrawn” will be added to the bibliographic data.

Section I.6 (2)
The following will be added to the bibliographic data:
-    supplementary classes (INID code 51)
-    applicant (INID code 71)
-    publication code “A 3”.

Sections I.12 and II.12
Where changes relate to the applicant or patent proprietor a distinction will be made between those resulting from transfers
and changes of name or address. The following sub-headings will be used:

Applicant (transfer)
Applicant (name/address)
Proprietor of the patent (transfer)
Proprietor of the patent (name/address).

Section II.1
1. An asterisk (*) will be placed alongside the publication number of patents granted in respect of an international
    application.



                                                                                                                            91
Article 129 – OJ 1994, 412



2.    The publication code “B 1” will be added to the two-line supplementary class references.
3.    “Additional information symbols”, separated from “invention symbols” by a double oblique stroke, will be added to the
      classification symbols.

Section II.6 (1)
The following additions will be made to the bibliographic data:
- Date of grant
- Proprietor of the patent (INID code 73).

Section II.7 (4)
1. An asterisk (*) will be placed alongside the publication number of patents granted in respect of an international
    application.
2. “Additional information symbols”, separated from “invention symbols” by a double oblique stroke, will be added to the
    classification symbols.

Miscellaneous
1. The first and last publication number of the numerical sequence appearing in each Patent Bulletin will be printed on the
    spine.
2. In the “General Remarks” the term “deleted” will be explained more fully.


                                                                                                                                               Article 129 – OJ 1994, 412




Two-letter country codes

OJ 1994, 412
The comprehensive list of two-letter country codes according to WIPO Standard ST.3 and International Standard ISO 3166
for states, other entities and international organizations1, used by the EPO in its publications and registers, has lately been
considerably extended and changed. The up-to-date list (as of 1 April 1994) is reproduced below.

AD            Andorra                                                                    BJ             Benin
AE            United Arab Emirates                                                       BM             Bermuda
AF            Afghanistan                                                                BN             Brunei Darussalam
AG            Antigua and Barbuda                                                        BO             Bolivia
AI            Anguilla                                                                   BR             Brazil
AL            Albania                                                                    BS             Bahamas
AM            Armenia                                                                    BT             Bhutan
AN            Netherlands Antilles                                                       BV             Bouvet Island
AO            Angola                                                                     BW             Botswana
AP            African Regional Industrial Property                                       BX             Benelux Trademark Office and Benelux
              Organization (ARIPO)                                                                      Designs Office
AQ            Antarctica                                                                 BY             Belarus
AR            Argentina                                                                  BZ             Belize
AS            American Samoa                                                             CA             Canada
AT            Austria                                                                    CC             Cocos (Keeling) Islands
AU            Australia                                                                  CF             Central African Republic
AW            Aruba                                                                      CG             Congo
AZ            Azerbaijan                                                                 CH             Switzerland
BB            Barbados                                                                   CI             Côte d’Ivoire
BD            Bangladesh                                                                 CK             Cook Islands
BE            Belgium                                                                    CL             Chile
BF            Burkina Faso                                                               CM             Cameroon
BG            Bulgaria                                                                   CN             China
BH            Bahrain                                                                    CO             Colombia
BI            Burundi                                                                    CR             Costa Rica

1
     This list also includes such states and territories which have not (yet) started issuing or registering industrial property titles.




92
                                                                                                          Article 129 – OJ 1994, 412



CU            Cuba                                                          JP          Japan
CV            Cape Verde                                                    KE          Kenya
CX            Christmas Island                                              KG          Kyrgyzstan
CY            Cyprus                                                        KH          Cambodia
CZ            Czech Republic                                                KI          Kiribati
DE            Germany                                                       KM          Comoros
DJ            Djibouti                                                      KN          Saint Kitts and Nevis
DK            Denmark                                                       KP          Democratic People’s Republic of Korea
DM            Dominica                                                      KR          Republic of Korea
DO            Dominican Republic                                            KW          Kuwait
DZ            Algeria                                                       KY          Cayman Islands
                                                                            KZ          Kazakhstan
EC            Ecuador                                                       LA          Laos
EE            Estonia                                                       LB          Lebanon
EG            Egypt                                                         LC          Saint Lucia
EH            Western Sahara                                                LI          Liechtenstein
EP            European Patent Office (EPO)                                  LK          Sri Lanka
ES            Spain                                                         LR          Liberia
ET            Ethiopia                                                      LS          Lesotho
FI            Finland                                                       LT          Lithuania
FJ            Fiji                                                          LU          Luxembourg
FK            Falkland Islands (Malvinas)                                   LV          Latvia
FM            Micronesia                                                    LY          Libya
FO            Faroe Islands                                                 MA          Morocco
FR            France                                                        MC          Monaco
GA            Gabon                                                         MD          Republic of Moldova
GB            United Kingdom                                                MG          Madagascar
GD            Grenada                                                       MH          Marshall Islands
GE            Georgia                                                       ML          Mali
GF            French Guiana                                                 MM          Myanmar4
GH            Ghana                                                         MN          Mongolia
GI            Gibraltar                                                     MO          Macau
GL            Greenland                                                     MP          Northern Mariana Islands
GM            Gambia                                                        MQ          Martinique
GN            Guinea                                                        MR          Mauritania
GP            Guadeloupe                                                    MS          Montserrat
GQ            Equatorial Guinea                                             MT          Malta
GR            Greece                                                        MU          Mauritius
GT            Guatemala                                                     MV          Maldives
GU            Guam                                                          MW          Malawi
GW            Guinea-Bissau                                                 MX          Mexico
GY            Guyana                                                        MY          Malaysia
HK            Hong Kong                                                     MZ          Mozambique
HM            Heard and McDonald Islands                                    NA          Namibia
HN            Honduras                                                      NC          New Caledonia
HR            Croatia                                                       NE          Niger
HT            Haiti                                                         NF          Norfolk Island
HU            Hungary                                                       NG          Nigeria
   2   3
IB /WO        International Bureau of the World                             NI          Nicaragua
              Intellectual Property Organization (WIPO)                     NL          Netherlands
ID            Indonesia                                                     NO          Norway
IE            Ireland                                                       NP          Nepal
IL            Israel                                                        NR          Nauru
IN            India                                                         NT          Neutral Zone
IO            British Indian Ocean Territory                                NU          Niue
IQ            Iraq                                                          NZ          New Zealand
IR            Iran (Islamic Republic of)                                    OA          African Intellectual Property Organization
IS            Iceland                                                                   (OAPI)
IT            Italy                                                         OM          Oman
JM            Jamaica                                                       PA          Panama
JO            Jordan                                                        PE          Peru
                                                                            PF          French Polynesia
2
     “IB” used in relation to international applications under the PCT      PG          Papua New Guinea
     filed with the International Bureau.
3
     “WO” used in relation to the international publication under the PCT
                                                                            4
     of international applications.                                             Previously BU Burma




                                                                                                                                     93
Article 129 – OJ 1994, 412



PH        Philippines                                WS         Samoa
PK        Pakistan                                   YE         Yemen
PL        Poland                                     YU         Yugoslavia
PM        St. Pierre and Miquelon                    ZA         South Africa
PN        Pitcairn                                   ZM         Zambia
PR        Puerto Rico                                ZR         Zaire
PT        Portugal                                   ZW         Zimbabwe
PW        Palau                                      The following countries no longer exist:
PY        Paraguay
QA        Qatar                                      SY/YD Democratic Yemen
RE        Reunion                                    DL/DD German Democratic Republic
RO        Romania
                                                     SU    Soviet Union
RU        Russian Federation
RW        Rwanda                                     CS    Czechoslovakia
SA        Saudi Arabia
SB        Solomon Islands
SC        Seychelles
SD        Sudan
SE        Sweden
SG        Singapore
SH        St. Helena
SI        Slovenia
SJ        Svalbard and Jan Mayen Islands
SK        Slovakia
SL        Sierra Leone
SM        San Marino
SN        Senegal
SO        Somalia
SR        Suriname
ST        Sao Tome and Principe
SV        El Salvador
SY        Syria
SZ        Swaziland
TC        Turks and Caicos Islands
TD        Chad
TF        French Southern Territories
TG        Togo
TH        Thailand
TJ        Tajikistan
TK        Tokelau
TM        Turkmenistan
TN        Tunisia
TO        Tonga
TP        East Timor
TR        Turkey
TT        Trinidad and Tobago
TV        Tuvalu
TW        Taiwan, Province of China
TZ        United Republic of Tanzania
UA        Ukraine
UG        Uganda
UM        United States Minor Outlying Islands
US        United States of America
UY        Uruguay
UZ        Uzbekistan
VA        Vatican City (Holy See)
VC        Saint Vincent and the Grenadines
VE        Venezuela
VG        Virgin Islands (British)
VI        Virgin Islands (U.S.)
VN        Viet Nam
VU        Vanuatu
WF        Wallis and Futuna Islands
WO        World Intellectual Property Organization
          (WIPO) (see also IB)



94
                                                                                                Article 134(2) – OJ 1979, 452



                                                                                                                             Article 134(2) – OJ 1979, 452




REPRESENTATION
Recommendation on the use of titles
by Professional Representatives
before the European Patent Office

OJ 1979, 452
During its 7th meeting, held at Munich from 27 to 30 November 1979, the Administrative Council of the European Patent
Organisation adopted the following recommendation:

1.   Persons entered on the list of professional representative should be able to use the following titles in the Contracting
     States:
     Europäischer Patentvertreter
     European Patent Attorney
     Mandataire en brevets européens.

2.   These persons should not be able to use the words “European”, “européen” or “Europäisch”, in conjunction with any title
     legally protected in any Contracting State.

3.   To the extent that these persons can use a national title in a Contracting State, they should also be able to use that title
     in another Contracting State, provided it does not give rise to confusion with a title protected in that State. Such
     confusion should not arise particularly in the case of any title mentioned in paragraph 1 or of any national title used in
     conjunction with an indication of the State to which it pertains.




                                                                                                                                    95
Article 134(8) – OJ 1997, 350



                                                                                                                                            Article 134(8)
                                                                                                                            Article 134(8) – OJ 1997, 350




Regulation on the establishment of an institute of professional
representatives before the European Patent Office

OJ 1997, 350 with Corrections according to OJ 1997, 130,
OJ 2002, 429 and OJ 2004, 361
as amended by Decision of the Administrative Council of the European Patent Organisation of 5 March 1997 (OJ EPO 1997,
130 ff)

The Administrative Council of the European Patent Organisation,

having regard to Article 134, paragraph 8(b), of the Convention on the Grant of European Patents of 5 October 1973,

whereas it is desirable to establish an Institute constituted by persons entitled to act as professional representatives,

has adopted this regulation:

Article 1
Establishment of the Institute
An Institute of Professional Representatives before the European Patent Office, hereinafter referred to as "the Institute", is
hereby established.

Article 2
Legal status
(1) In each of the States party to the European Patent Convention, the Institute shall enjoy the most extensive legal capacity
accorded to legal persons under the national law of that State; it may in particular acquire or dispose of movable and
immovable property and may be party to legal proceedings.

(2) The Institute shall be non-profit making.

Article 3
Cover for expenditure
The expenditure of the Institute shall be covered by its own resources, derived in particular from the subscriptions of its
members.

Article 4
Objects of the Institute
The objects of the Institute shall be to:

(a) collaborate with the European Patent Organisation on matters relating to the profession of professional representatives
and in particular on disciplinary matters and on the European Qualifying Examination;

(b) aid in the dissemination of knowledge appertaining to the work of its members;

(c) promote compliance by its members with the Rules of Professional Conduct, inter alia through the formulation of
recommendations;

(d) liaise as appropriate with the European Patent Organisation and other bodies on all matters relating to industrial property.

Article 5
Membership
(1)1 All persons on the list of professional representatives before the European Patent Office (zugelassener Vertreter vor dem
EPA, European patent attorney, mandataire en brevets européens, for short) shall be members of the Institute. No other
persons shall be members.

(2) The European Patent Office shall inform the Institute of all changes in the list.

1
     Amended by decision of the Administrative Council of 17 June 2004, entered into force on 17 June 2004.




96
                                                                                                                Article 134(8) – OJ 1997, 350



Article 6
Subscriptions
(1) Each member shall pay an annual subscription.

(2) The amount of the subscription and other arrangements relating to payment shall be laid down by the Council of the
Institute.

Article 7
The Council
(1) The members of the Institute shall elect a Council from among their number. Representatives and substitutes shall be
elected in equal numbers. Elections shall take place every three2 years.

(2) Each State party to the European Patent Convention shall be a constituency in which such members shall be entitled to
vote as have their place of business or employment therein. Each member shall have one vote. A member who has places of
business or employment in more than one constituency must choose the constituency in which he exercises his vote.

(3) The number of representatives to be elected in each constituency shall be determined by reference to the number of
electors in accordance with the following table:1

                                                      Number of            Number of
                                                      electors in          representatives
                                                      constituency         to be elected
                                                      up to 25             2
                                                      26 to 500            4
                                                      over 500             6

(4) Depending on the constituency, representatives and substitutes shall either be elected by the votes of all the electors in
the constituency taken together, or as to one half shall be elected by electors engaged in private practice and as to the other
half by electors engaged in any other capacity.

(5) 3

(6) A constituency with a non-unitary electorate may adopt the other method of voting if a majority of the electors engaged in
private practice and a majority of the electors otherwise engaged so decide. A constituency with a unitary electorate may
adopt the other method of voting if a majority of the electors engaged in private practice or a majority of the electors otherwise
engaged so decide. The Council shall organise a vote for this purpose if called upon to do so by at least ten electors in either
category, or one half of the electors of a category if there are less than twenty.

(7) In each election in a constituency with a non-unitary electorate electors shall state the capacity in which they are engaged
in their profession.

(8) The Council shall take the necessary measures to provide for elections and in particular for voting by post.

Article 8
Meetings of the Council
(1) The Council shall meet as often as it considers necessary, and in any event at least once a year. It shall submit a report
and accounts to the members of the Institute every year.

(2) On each election of the Council, it shall elect from among its members a President, two Vice-Presidents, a
Secretary-General and a Treasurer. The offices of President and Vice-President may each be held for a maximum of two
consecutive terms. However, the two offices may not be held for more than a total of three consecutive terms.

Article 9
Powers of the Council
(1) The Council shall have the management and control of the affairs of the Institute.

(2) The Council shall have power to make regulations governing the conduct of the business of the Institute and its constituent
and any subsidiary bodies.
2
    Changed by the Administrative Council on 5 March 1997 in accordance with the motion adopted by the Council of the Institute on 4 November 1996 at
    Vienna; applicable for the first time after the elections in 1999.
3
    Deleted according to decision of the Administrative Council of 7 June 2002 entered into force on 7 June 2002, OJ EPO 2002, 429.




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Article 134(8) – OJ 1997, 350




(3) The Council may, within the terms of the Regulation on Discipline for Professional Representatives, make
recommendations on conduct.

Article 10
Duties of the President and Board
(1) The President of the Council shall represent the Institute.

(2) The Council shall set up from among its members a Board which shall include at least the President, the Vice-Presidents,
the Secretary-General and the Treasurer.

(3) The Board shall perform the duties given to it by the Council.

Article 11
The Disciplinary Committee
(1) The Council shall set up a Disciplinary Committee.

(2) On each election the Council shall appoint the members of the Committee from among the members of the Institute.

(3) The Disciplinary Committee shall not include any members of the Board.

Article 12
Other Committees
The Council may set up other Committees and shall fix their terms of reference.

Article 13
General meetings
(1) General meetings of the whole membership of the Institute may be called by the Council at any time on 90 days' notice.
They shall be called by the Council following a written request of not less than 5% of the members of the Institute and
representing at least two constituencies.

(2) The provisional agenda for a general meeting shall be drawn up by the Board and communicated to the members at least
30 days before the opening of the meeting.

(3) The provisional agenda shall include all items which the Board deems it desirable to put before the general meeting. It
shall also include all items proposed by at least 20 members of the Institute which are made at least 60 days before the
opening of the meeting.

(4) The general meeting shall adopt its agenda at its opening session.

(5) Items proposed by members of the Institute for inclusion in the agenda less than 60 days before the opening of the
meeting or during the meeting may be placed on the agenda if the general meeting so decides by a majority of members
present. No such item may, unless the general meeting decides otherwise by a two-thirds majority of the members present,
be considered until twenty-four hours have elapsed since it was placed on the agenda.

(6) The general meeting shall have power to adopt resolutions.

Article 14
Amendment of this Regulation
Proposals for amendments to this Regulation shall be made by the Council acting by a two-thirds majority of its members.
Amendments to this Regulation shall be adopted by the Administrative Council of the European Patent Organisation. The
Administrative Council may also consider amendments acting of its own motion and after consulting the Council.

Article 154
Transitional provisions
(1) In each constituency created after the beginning of a term of office of the Council, representatives shall be appointed to
the Council by the President of the European Patent Office acting on a proposal by the professional associations considered
to be representative by the head of the central industrial property office of the Contracting State concerned. Their term of
office shall expire at the same time as that of the Council to which they have been appointed.


4
     Changed by the Administrative Council on 5 March 1997 in accordance with the motion adopted by the Council of the Institute on 4 November 1996 at
     Vienna.




98
                                                                                                               Article 134(8) – OJ 2003, 523



    5
(2) If a new constituency is created after 1 August in the year preceding that in which the Council is elected, the term of office
of representatives appointed to the Council by the President of the EPO shall extend to the end of the following term of office
of the Council.

Article 16
Entry into force
This regulation shall enter into force on 21 October 1977.
Done at Munich, 21 October 1977
For the Administrative Council
The Chairman
Georges Vianès


                                                                                                                                        Article 134(8) – OJ 2003, 523




Code of Conduct of the Institute of Professional
Representatives before the European Patent Office

OJ 2003, 523
This Code is to govern the conduct and other activities of the members in so far as such activities are related to the
Convention on the Grant of European Patents (European Patent Convention) signed in Munich on 5 October 1973, as may be
amended from time to time.

In this Code, the following definitions are applicable:

“Institute”
means the Institute of Professional Representatives before the European Patent Office;

“Member”
means a member of this Institute;

“Convention”
means the European Patent Convention;

“Council”
means the Council of the Institute;

“Client”
means any natural person or legal entity who takes advice or asks ser- vices of a member;

“Disciplinary Bodies”
means those listed in Article 5 of the Disciplinary Regulation;

“Disciplinary Committee”
means the Committee listed in Article 5 of the Disciplinary Regulation.

1. General

(a) The general requirements for members of the Institute are laid down in the Disciplinary Regulation.




5
    Added by decision of the Administrative Council of 7 June 2002 entered into force on 7 June 2002, OJ EPO 2002, 429.




                                                                                                                                               99
Article 134(8) – OJ 2003, 523




(b) The general principles of professional conduct are laid down in this Code, which reflects the present views of the Council.
A member is not released by this Code from his own responsibility to comply with the Rules of Professional Conduct set out in
the Disciplinary Regulation in Articles 1, 2 and 3.

(c) The basic task of a member is to serve as a reliable adviser to persons interested in patent matters. He should act as an
independent counsellor by serving the interests of his clients in an unbiased manner without regard to his personal feelings or
interests.

(d) A member shall take measures to safeguard his client’s interests in the event he would be prevented from exercising his
profession.

(e) Good fellowship among members is a necessity for preserving the reputation of the profession and should be exercised
irrespective of personal feelings.

(f) Each member should know of the Code and cannot plead ignorance of it.

(g) A breach of this Code cannot be justified by referring to instructions from a client.

2. Advertisements

(a) Advertising is generally permitted provided that it is true and objective and conforms with basic principles such as integrity
and compliance with professional secrecy.

(b) The following are exceptions to permitted advertising:

(1) the identification of a client without the express authorisation of that client;

(2) the mention of the name of another professional entity unless there is a written co-operation agreement between the
member and that entity;

(3) the advertisement, announcement or publishing of offers to buy, sell or negotiate industrial property rights, except upon
the instructions of a client.

3. Relations with the public

(a) A member shall uphold the public reputation of the Institute, of its members and of the practice of representation before
the European Patent Office.

(b) A member shall not give any indication on office premises, stationery or otherwise which is misleading to the public.

(c) A member shall not give any commission to others for the introduction of business, but this does not extend to the
acquisition in part or in whole of another patent agency practice.

(d) A member shall not permit without adequate supervision professional activities related to the European Patent Office
under his name or the name of his association by a person who is not a member.

(e) As far as the exercise of his profession is concerned, a member is responsible for the acts of non-member assistants.

4. Relations with clients

(a) A member shall at all times give adequate care and attention and apply the necessary expertise to work entrusted to him
by clients. A member shall keep clients informed of the status of their cases.

(b) In principle, a member does not need to serve the interests of a client in matters not connected with professional work
entrusted to him by the client.

(c) A member may demand advance payments from a client.




100
                                                                                                Article 134(8) – OJ 2003, 523




(d) In addition to the requirements of Article 3(2) of the Disciplinary Regulation, a member shall decline an order which is in
conflict with his own interests. In all such cases, if the order cannot be postponed without possible damage to the client, a
member shall accept and perform the order so far as immediately necessary to avoid such possible damage; thereafter he
shall resign from the case.

(e) A member must not acquire a financial interest in any industrial right in such circumstances as to give rise to a conflict
between professional duty and interest. He must not charge a fee directly related to the outcome of the services he provides.

(f) Supplementary to Articles 2 and 3 of the Disciplinary Regulation, a member shall not take any action against a particular
matter which is being handled or has been handled by the member or another person in his office, unless the client in the
matter agrees to this action or unless the member has no cognisance of the matter and is no longer in a position to take
cognisance of it. The member is not permitted to make use in the action of information obtained during the time the matter
was previously handled, unless the information is public.

(g) A member is automatically released from his secrecy obligation according to Article 2 of the Disciplinary Regulation if the
secret information becomes published.

5. Relationship with other members

(a) A member must observe good fellowship towards other members, and this includes courtesy and the fact that a member may
not speak of another member in discourteous or offensive terms. Grievances in respect of another member should first be
discussed in private with the other member, either directly or through a third member, and then if necessary through the official
channels prescribed by the Institute and in the Disciplinary Regulation.

(b) Since a prime interest of the Institute is to maintain a unified profession, no member must exercise or promote
discrimination between members, for example on grounds of language or nationality.

(c) A member shall avoid any exchange of views about a specific case, which he knows or suspects is or was being handled
by another member, with the client of the case, unless the client declares his wish to have an independent view or to change
his representative. The member may inform the other member only if the client agrees.

(d) Where a member is instructed by a client to take over the handling of a case from another member, the member so
instructed is free to accept such instruction but then shall ensure that the other member is informed. Such other member shall
without delay, loan or transfer all documents necessary for the handling of the case or provide copies at reasonable expense
to the new representative.

6. Relationship with the European Patent Office

In all dealings with the European Patent Office and its employees, a member shall act courteously, and shall do everything
possible to uphold the good reputation of this Institute and its members.

7. Relationship with the Institute

(a) Members must keep the Institute informed of their address to which correspondence and other information from the
Institute are to be sent. Changes of address must be notified to the Secretary-General without delay.

(b) Members must pay, in accordance with arrangements laid down and notified by the Council, the annual subscription
required by Article 6 of the Regulation on the establishment of the Institute.

If a member fails to pay the subscription as required by the arrangements, the matter may be referred by the Treasurer to the
Disciplinary Committee.

(c) No member may, unless authorised by the President of the Institute, make any written or oral communication on behalf of
the Institute.

(d) A member has the right to seek through the Secretary-General an opinion on the permissibility, under this Code, of any act
the member proposes to do or sanction. Such opinion shall not be binding on the Disciplinary Bodies.

(e) Except as provided in paragraph 5(b), breaches of the Code should be brought to the notice of the Disciplinary Committee
in writing.



                                                                                                                            101
Article 134(8) – OJ 2005, Suppl. to OJ No. 1/2005, page 1




Decided by the Council of the Institute on 13.11.1979, Brussels

supplemented on 5.11.1985, Munich;

amended on 3.10.1997, Strasbourg

amended on 8.05.2001, Madrid.


                                                                                                                      Article 134(8) – OJ 2005, Suppl. to OJ No. 1/2005, page 1




Decision of the President of the European Patent Office dated
16 December 2004 concerning the publication of a revised
version of the arrangements for deposit accounts and their
annexes

- OJ 2005, Suppl. to OJ No. 1/2005, page 1 -

Annex C.2 to the ADA
Notice re debiting of EPl annual subscriptions from deposit
accounts held with the EPO

- OJ 2005, Suppl. to No. 1/2005, page 49 -
THESE TEXTS ARE REPRODUCED IN FULL UNDER ARTICLE 5(2) RRF


                                                                                                                                                   Article 134(8) – OJ 1978, 91




REPRESENTATION
Regulation on discipline for professional representatives

OJ 1978, 91
THE ADMINISTRATIVE COUNCIL OF THE EUROPEAN PATENT ORGANISATION,

HAVING REGARD to Article 134, paragraph 8(c), of the Convention on the Grant of European Patents of 5 October 1973,

WHEREAS it is desirable to adopt provisions governing the disciplinary power to be exercised by the Institute of Professional
Representatives and by the European Patent Office on professional representatives,

HAS ADOPTED THIS REGULATION:




102
                                                                                                 Article 134(8) – OJ 1978, 91



PART I
RULES OF PROFESSIONAL CONDUCT

Article 1
General professional obligations
(1) A professional representative shall exercise his profession conscientiously and in a manner appropriate to its dignity. In
particular, he shall not knowingly make any false or misleading statement.

(2) A professional representative shall conduct himself in such a manner as not to prejudice the necessary confidence in his
profession.

Article 2
Professional secrecy
A professional representative shall be bound not to disclose information accepted by him in confidence in the exercise of his
duties, unless he is released from this obligation.

Article 3
Special provisions on conduct towards clients
(1) A professional representative who is unwilling to accept a call upon his professional services or who withdraws his
services shall forthwith inform the client. In the latter case, he shall take appropriate measures to enable the client to avoid
detriment.

(2) A professional representative shall refuse or withdraw his services if acceptance or continuation would necessitate his
dealing with a particular matter on which he has represented or advised another client with opposing interests and the conflict
has not been resolved.

PART II
DISCIPLINARY MEASURES

Article 4
Disciplinary measures
(1) A professional representative who fails to comply with the Rules of professional conduct may incur one of the following
penalties:

(a) a warning,

(b) a reprimand,

(c)   a fine not exceeding DM 20.000,

(d) deletion from the list of professional representatives for not more than six months,

(e) deletion from the list of professional representatives for an indefinite period.

(2) The penalties provided for in paragraph 1 may also be incurred if a professional representative fails to pay within two
months of the due date a subscription in accordance with Article 6 of the Regulation on the Establishment of an Institute of
Professional Representatives before the European Patent Office.

PART III
DISCIPLINARY BODIES

Article 5
Disciplinary Bodies
Infringements of the Rules of Professional Conduct may be considered by the following bodies:

(a) the Disciplinary Committee of the Institute of Professional Representatives before the European Patent Office,

(b) the Disciplinary Board of the European Patent Office,

(c)   the Disciplinary Board of Appeal of the European Patent Office.




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Article 134(8) – OJ 1978, 91



Article 6
Powers and responsibility of the Disciplinary Committee of the Institute
(1) The Disciplinary Committee shall consider any alleged breach of the Rules of Professional Conduct which may be
brought to its notice in writing.

(2) After any preparatory inquiries which it may wish to carry out the Disciplinary Committee shall decide either to:

(a) dismiss the matter;

(b) issue a warning or reprimand, or

(c)   refer the matter, together with the relevant papers, to the Disciplinary Board of the European Patent Office.

(3) If the Disciplinary Committee does not take a final decision within 9 months of an alleged breach of the Rules of
Professional Conduct being brought to its notice, it shall within that time limit submit a report on the state of the proceedings
to the Chairman of the Disciplinary Board of the European Patent Office.

(4) On receiving the report or on expiry of the time limit referred to in paragraph 3, the Chairman of the Disciplinary Board
shall either:

(a) extend the time limit for consideration of the matter by the Disciplinary Committee, or

(b) transfer the matter to the Disciplinary Board.

(5) The Chairman may grant no more than two extensions, totalling not more than 6 months, under paragraph 4(a).

Article 7
Powers and responsibilities of the Disciplinary Board
of the European Patent Office
(1) The Disciplinary Board of the European Patent Office shall consider any alleged breach of the Rules of Professional
Conduct which is referred to it by the Disciplinary Committee or transferred to it by its Chairman under Article 6, paragraph
4(b).

(2) After any preparatory inquiries which it may wish to carry out, the Disciplinary Board

shall decide either to:

(a) dismiss the matter; or

(b) impose one of the penalties provided for in Article 4.

Article 8
Powers and responsibilities of the Disciplinary Board of Appeal
(1) The Disciplinary Board of Appeal shall hear appeals against final decisions, including dismissals, of the Disciplinary
Committee of the Institute and the Disciplinary Board of the European Patent Office.

(2) Appeals may be filled by the professional representative concerned, the President of the Council of the Institute and the
President of the European Patent Office.

Article 9
Composition of the Disciplinary Board of the European Patent Office
(1) The Disciplinary Board shall consist of three legally qualified members of the European Patent Office and two
professional representatives. The Chairman shall be a legally qualified member. The President of the European Patent Office
may if necessary set up more than one Board.

(2) The members of the Disciplinary Board shall be appointed by the President of the European Patent Office for a period of
three years. The professional representatives shall be selected from a list proposed to the President by the Board of the
Institute. The President shall determine the number of professional representatives required. The number of professional
representatives on the list must be least twice this number. Professional representatives sitting on the Disciplinary Board may
not simultaneously sit on another Disciplinary Board or on the Board of the Institute or be employed by the Institute on a full or
part-time basis.




104
                                                                                                 Article 134(8) – OJ 1978, 91




(3) Members of the Disciplinary Board may be relieved of their duties during their term of office by the President of the
European Patent Office only if serious grounds for such action exist.

Article 10
Composition of the Disciplinary Board of Appeal
(1) The Disciplinary Board of Appeal shall consist of three legally qualified members of the European Patent Office and two
professional representatives. The Chairman shall be a legally qualified member.

(2) The members of the Disciplinary Board of Appeal shall be appointed by the Administrative Council for a period of five
years. The legally qualified members shall be appointed on a proposal of the President of the European Patent Office. The
professional representatives shall be selected from a list proposed to the Administrative Council by the Board of the Institute.
The Administrative Council shall determine the number of professional representatives required. The number of professional
representatives on the list must be at least twice this number. Members of the Disciplinary Board of Appeal may not
simultaneously sit on another Disciplinary Body or on the Board of the Institute or be employed by the Institute on a full or
part-time basis.

(3) The members of the Disciplinary Board of Appeal may be relieved of their duties during their term of office by the
Administrative Council only if serious grounds for such action exist.

(4) The professional representatives shall be assigned to individual sittings on the basis of a rota drawn up before the
beginning of the year by the Chairman.

Article 11
Independence of members of Disciplinary Bodies
The members of Disciplinary Bodies shall be independent in the performance of their duties and in particular shall not be
bound by any instructions in reaching their decisions.

PART IV
PROCEDURE

Article 12
Right to be heard
Before taking any decision which might prejudice the interests of the representative concerned a Disciplinary Board shall give
him an opportunity to comment. The President of the Council of the Institute and the President of the European Patent Office
shall be given an opportunity to comment before any final decision is taken.

Article 13
Oral Proceedings
(1) Oral proceedings shall take place either at the instance of the Disciplinary Body if it considers this to be expedient or at
the request of the professional representative concerned.

(2) Rule 71 of the Implementing Regulations to the European Patent Convention shall apply mutatis mutandis to oral
proceedings for in this Article.

(3) The members of a Disciplinary Board shall be present at any oral proceedings conducted by that body. A person
appointed to take the minutes shall also be present.

Article 14
Persons entitled to attend oral proceedings
The President of the European Patent Office, the President of the Council of the Institute, the professional representative and
the person appointed under Article 17 shall be entitled to be present throughout oral proceedings. The President of the
European Patent Office and the President of the Council of the Institute may each nominate some other person to attend on
his behalf.

Article 15
Preparatory inquiries
Prior to taking a decision, the Chairman of the Disciplinary Board or of the Disciplinary Board of Appeal may entrust to one of
the legally qualified members the task of conducting preparatory inquiries.




                                                                                                                            105
Article 134(8) – OJ 1978, 91



Article 16
Exclusion and objection
Article 24 of the European Patent Convention shall apply mutatis mutandis as regards the exclusion of and objection to
members of any of the Disciplinary Bodies.

Article 17
Legal representation
The professional representative may be assisted at any stage of the proceedings by any legal practitioner qualified in one of
the Contracting States or by any other professional representative.

Article 18
Obligation to supply information
Where proceedings against a professional representative are pending before a Disciplinary Body, the representative shall
supply all necessary information and, on request, submit his files to the Body, except in so far as this would be in conflict with
his obligation to professional secrecy.

Article 19
Access to files
(1) Subject to paragraph 2, the person appointed under Article 17 shall be entitled to inspect all files and evidence and to
receive copies of all documents.

(2) The right of access referred to in paragraph 1 may be refused if the Chairman of the Disciplinary Body is satisfied that
this would entail a serious risk of prejudicing the Disciplinary Body’s preparatory inquiries. This limitation shall be set aside in
good time for the person appointed under Article 17 to be able to comment before the Disciplinary Body takes a decision on
the merits.

Article 20
Confidentiality
Proceedings before Disciplinary Bodies shall not be public. Their deliberations shall be confidential.

Article 21
Decisions
(1) A decision of a Disciplinary Body shall state the reasons on which it is based and shall be given in writing. It shall be
notified to the professional representative, the President of the Council of the Institute and the President of the European
Patent Office. Complainants shall be informed of the results of the proceedings.

(2) Rules 78, 81 and 82 of the Implementing Regulations to the European Patent Convention shall apply mutatis mutandis.

Article 22
Appeals
(1) Notice of appeal must be filed in writing with the Disciplinary Board of Appeal within one month after the date of the
notification of the decision appealed form. Within two months after the date of notification of the decision, a written statement
setting out the grounds of appeal must be filed.

(2) If the appeal does not comply with the requirements of paragraph 1, the Disciplinary Board of Appeal shall reject it as
inadmissible.

(3) Article 111, paragraph 1, and paragraph 2, first sentence, of the European Patent Convention shall apply mutatis
mutandis to appeals under this Article.

Article 23
Revision of decisions
(1) An application for the revision of a final decision may be made only on discovery of a fact which is of such a nature as to
be a decisive factor in favour of the professional representative and which, when the decision was taken, was unknown to the
Disciplinary Body which last dealt with the matter and to the professional representative.

(2) The application shall identify the decision to which it relates and shall also contain particulars of the facts and evidence
showing that the conditions laid down in paragraph 1 have been fulfilled.




106
                                                                                                   Article 134(8) – OJ 1978, 91




(3) The Disciplinary Board of Appeal shall decide on the admissibility of the application for revision. If it decides that the
application is admissible, the application shall be referred for further decision on the merits to the Disciplinary Body which last
dealt with the matter.

Article 24
Time limits
(1) Rules 83 and 85 of the Implementing Regulations to the European Patent Convention shall apply to all time limits
specified in this Regulation or fixed by a Disciplinary Body.

(2) A party to the proceedings who, in spite of all due care required by the circumstances having been taken, was unable to
observe a time limit shall, upon application, have his rights re-established. The application must be filed in writing within one
month from the removal of the cause of non-compliance with the time limit. Article 122, paragraph 2, second and third
sentences, and paragraph 3, first sentence and paragraph 4, of the European Patent Convention shall apply mutatis
mutandis.

Article 25
Supplementary provisions
(1) Article 113, paragraph 1, Article 114, Article 117 with the exception of paragraph 2, Article 125 and Article 131, of the
European Patent Convention shall apply mutatis mutandis to proceedings before the Disciplinary Bodies.

(2) The Disciplinary Bodies shall adopt their own additional rules of procedure. These shall require the approval of the
Administrative Council on a proposal from the Disciplinary Board of Appeal.

PART V
MISCELLANEOUS

Article 26
Period of limitation
(1) Proceedings in respect of a failure to comply with professional obligations shall be barred after a period of five years.
The period of limitation shall begin on the date of such failure.

(2) The period of limitation shall be interrupted by any procedural step taken in respect of such failure by a Disciplinary Body
or one of its members against the professional representative concerned. Each interruption shall cause the period of limitation
to begin again.

PART VI
COSTS AND ENFORCEMENT

Article 27
Costs of proceedings
(1) Proceedings before Disciplinary Bodies shall be free of charge; only costs necessarily incurred for the purpose of the
proceedings shall be recoverable.

(2) The professional representative, the Institute and the European Patent Office shall bear their own costs. However, if the
matter is not dismissed, the final decision may stipulate, having regard to special circumstances, that the costs necessarily
incurred by the Institute or the European Patent Office shall be borne, in whole or in part, by the professional representative
concerned. If the matter is dismissed, the final decision may stipulate that the costs necessarily incurred by the professional
representative shall be borne in whole or in part by the Institute.

(3) The Disciplinary Body shall fix, in a separate decision, the amount of costs to be refunded. Such decisions shall not be
subject to appeal.

Article 28
Enforcement
(1) Failure on the part of a professional representative to pay a fine imposed upon him by a final decision or to refund any
costs due from him shall be deemed to be a breach of the Rules of Professional Conduct.

(2) A final decision of a Disciplinary Body to delete a professional representative from the list of professional representatives
shall take immediate effect as soon as it ceases to be subject to appeal. It shall be notified to the Legal Division of the
European Patent Office.




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Article 134(8) – OJ 1980, 176



PART VII
FINAL PROVISIONS

Article 29
Amendment of this Regulation
Proposals for amendments to this Regulation shall be made by the Council of the Institute acting by a two-thirds majority of its
members. Amendments to this Regulation shall be adopted by the Administrative Council of the European Patent
Organisation. The Administrative Council may also consider amendments acting of its own motion and after consulting the
Council.

Article 30
Entry into force
This regulation shall enter into force on 21 October 1977.
DONE at Munich, 21 October 1977
For the Administrative Council
The Chairman
Georges Vianès


                                                                                                                            Article 134(8) – OJ 1980, 176




REPRESENTATION
Decision of the Administrative Council of 6 June 1980
approving the Additional Rules of Procedure of the
Disciplinary Committee of the Institute of Professional
Representatives before the European Patent Office and of the
Disciplinary Board of the European Patent Office and of the
Disciplinary Board of Appeal of the European Patent Office

OJ 1980, 176
THE ADMINISTRATIVE COUNCIL OF THE EUROPEAN PATENT ORGANISATION -

Having regard to Article 25, paragraph 2, of the Regulation on Discipline for Professional Representatives,

Having regard to the Additional Rules of Procedure of the Disciplinary Committee of the Institute of Professional
Representatives which the Committee mentioned in Article 5(a) has adopted,

Having regard to the Additional Rules of Procedure of the Disciplinary Board of the European Patent Office which the Board
mentioned in Article 5(b) has adopted,

Having regard to the Additional Rules of Procedure of the Disciplinary Board of Appeal of the European Patent Office which
the Board of Appeal mentioned in Article 5(c) has adopted,

Having regard to the proposal made by the Disciplinary Board of Appeal on 17 April 1980,

HAS DECIDED AS FOLLOWS:




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                                                                                               Article 134(8) – OJ 1980, 177



Article 1
The Additional Rules of Procedure of the Disciplinary Committee of the Institute of Professional Representatives, together
with the Additional Rules of Procedure of the Disciplinary Board of the European Patent Office and the Additional Rules of
Procedure of the Disciplinary Board of Appeal of the European Patent Office, as annexed hereto, are approved.

Article 2
This Decision shall enter into force on 6 June 1980.
Done at The Hague on 6 June 1980.
For the Administrative Council
The Chairman
G. Vianès


                                                                                                                           Article 134(8) – OJ 1980, 177




REPRESENTATION
Additional Rules of Procedure of the Disciplinary Committee
of the Institute of professional representatives
before the European Patent Office

OJ 1980, 177
The Disciplinary Committee of the Institute of Professional Representatives before the European Patent Office provided for in
Article 5 (a) of the Regulation on Discipline for Professional Representatives of 21. October 1977 (hereinafter called the
“Discipline Regulation”) hereby adopts under Article 25, paragraph 2, thereof, the following Additional Rules of Procedure:

Article 1
The Chairman and the Secretary of the Committee
(1) Following the setting up of the Disciplinary Committee under Article 11 of the Regulation on the Establishment of an
Institute of Professional Representatives before the European Patent Office, the members of the Committee shall elect from
among themselves a Chairman, a deputy Chairman, a Secretary and a Deputy Secretary. They are elected by a simple
majority of votes of those members who have actually voted. In the event of a tie, the decision shall be taken by lot.

(2) In case the Chairman or the Secretary is prevented from attending to his duties he shall ex officio be replaced by his
deputy. Should the Chairman and his deputy or the Secretary and his deputy be unable to attend a meeting, the members
present shall elect a chairman or a secretary who will act as such at that meeting.

Article 2
Chambers
(1) The Committee, as constituted for the examination of any alleged breach of the Rules of Professional Conduct which is
brought to the Committee’s notice in writing, shall consist of three members, from case to case nominated by the Chairman of
the Committee, hereinafter called a “Chamber”.

(2) The Chairman of the Committee shall nominate one of the members of the Chamber as Chairman of that Chamber and
at least one other member of the Committee as alternate member of that Chamber.

(3) The Chairman of the Committee may, if necessary, subsequently nominate one or more further members of the
Committee as alternate member of that Chamber.

Article 3
Replacement of members
(1) Reasons for replacement by alternates shall, in particular, include conflicting interests, sickness, excessive workload and
commitments which cannot be avoided.



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Article 134(8) – OJ 1980, 177




(2) Any member requesting to be replaced by an alternate shall inform the Chairman of the Chamber concerned of his
unavailability without delay.

Article 4
Exclusion and Objection
(1) If the Chairman has knowledge of a possible reason for exclusion or objection which does not originate from the member
himself or from the professional representative concerned, then the Chamber shall decide as to the action to be taken without
the participation of the member concerned. For the purpose of taking this decision, the member concerned shall be replaced
by an alternate nominated by the Chairman of the Chamber.

(2) The member concerned shall be invited to present his comments as to whether there is a reason for exclusion.

(3) Before a decision is taken on the exclusion of a member, there shall be no further proceedings in the case.

Article 5
The Registrar
(1) The Chairman of the Disciplinary Committee shall, with the approval of the President of the Council of the Institute of
Professional Representatives before the European Patent Office, appoint a member or an employee of the Institute of
Professional Representatives before the European Patent Office, hereinafter called the “Institute”, to act as Registrar to the
Disciplinary Committee. A further member or employee of the Institute shall be appointed to act as deputy Registrar where the
Registrar is unable to act.

(2) The Registrar shall, in particular, monitor any time limits relating to matters before the Disciplinary Committee, including
the time limit prescribed in Article 6, paragraph 3, of the Discipline Regulation.

Article 6
Rapporteurs
(1) The Chairman of the Chamber shall, for each matter, designate a member of the Chamber, or himself as rapporteur.

(2) The rapporteur may conduct preparatory inquiries in accordance with Articles 15 and 25, paragraph 1, of the Discipline
Regulation: he shall prepare draft communications, carry out other preliminary work and draft decisions.

(3) Draft communications and decisions shall be sent to the other members of the Chamber designated to consider the
matter, who shall either approve them or make suggestions for amendment. If no agreement can be reached by this means,
the Chamber shall meet to decide jointly on the final text.

(4) Communications shall be signed by the rapporteur on behalf of the Chamber.

(5) The rapporteur shall make the preparations for meetings and oral proceedings. He will set out the issues that need to be
determined and, if necessary, send a communication to the professional representative concerned to this effect.

(6) If the rapporteur considers that his knowledge of the language of the proceedings is insufficient for drafting
communications or decisions, he may draft these in one of the other official languages of the European Patent Office. The
drafts shall be translated, unless the Chairman of the Chamber otherwise directs, by the Secretariat of the Institute into the
language of the proceedings and the translations shall be checked by the rapporteur or by another member of the Chamber.

Article 7
Complaints
(1) On request, the Registrar shall explain how a complaint should be formulated and filed.

(2) A complaint shall be in writing addressed to the Disciplinary Committee. It shall be signed by the complainant or any
legal advisor or professional representative acting on his behalf and shall include the name and address of the complainant.

(3) A complaint shall not be considered to have been brought to the notice of the Disciplinary Committee until it has been
received by the Registrar in one of the official languages of the European Patent Office.

(4) The Registrar shall:

(a) register each complaint together with the date of receipt;




110
                                                                                                 Article 134(8) – OJ 1980, 177




(b) immediately send copies of the complaint to the Chairman and the Secretary of the Disciplinary Committee, to the
President of the Council of the Institute and the President of the European Patent Office;

(c) notify the Chairman of the Disciplinary Board of the European Patent Office of the receipt of a complaint and the date of
receipt.

(5) The Chairman of the Disciplinary Committee shall without delay nominate a Chamber and assign the complaint to that
Chamber.

Article 8
Procedure following receipt of a Complaint
(1) Unless a complaint is summarily dismissed on the ground mentioned in Article 18 hereof, the Chamber concerned shall,
without delay, send a copy of the complaint, together with a reference to where these Rules of Procedure are published, to
the professional representative concerned, who shall be given a period of two months after receipt by him of the copy of the
complaint to present a written defence, which shall be addressed to the rapporteur.

(2) During this period, the professional representative concerned may request oral proceedings. If he does so, he shall be
invited to attend a hearing and copies of the invitation shall be sent to the President of the Council of the Institute and to the
President of the European Patent Office.

(3) If the professional representative concerned does not reply in writing or attend the hearing, then the Chamber may take
a decision on the basis of the available material.

Article 9
Minutes
(1) Minutes of oral proceedings and of the taking of evidence shall be drawn up by the rapporteur or the Registrar or such
other employee of the Institute as the Chairman of the Chamber may nominate. Rule 76 of the Implementing Regulations to
the European Patent Convention shall apply mutatis mutandis to the taking of such minutes.

(2) The Chairman of the Chamber may direct that tape recordings of any oral evidence and of any oral statements may be
made in addition to minutes of such evidence and statements.

Article 10
Language of the proceedings
(1) The language of the proceedings before a Chamber shall be one of the official languages of the European Patent Office,
decided upon by the Chamber. The Chairman of a Chamber may decide to accept documents and to hear witnesses in
another language, provided that a translation into one of the languages of the European Patent Office is supplied if one of the
members of the Chamber so requires.

(2) If the professional representative concerned so requires, he shall receive translations into his own language of all
documents relating to his case and he may defend himself in his own language.

(3) If oral proceedings are to take place and, at least two weeks before the date laid down for such proceedings, the
professional representative concerned requests interpretation into and from his own language, the Chairman of the Chamber
shall make the necessary arrangements.

Article 11
Change in the composition of the Chamber
(1) If the composition of the Chamber is changed after oral proceedings, the professional representative concerned shall be
informed that, at his request, fresh oral proceedings shall be held before the Chamber in its new composition. Fresh oral
proceedings shall also be held if so requested by the new member and if the other members of the Chamber have given their
agreement.

(2) The new member shall be bound to the same extent as the other members by an interim decision which has already
been taken.

(3) If, when the Chamber has already reached a final decision, a member of the Chamber is unable to act, he shall not be
replaced by an alternate. If the Chairman of the Chamber is unable to act, the member of the Chamber having the longer
service on the Disciplinary Committee, or in the case where members have the same length of service, the elder member,
shall sign the decision on behalf of the Chairman.



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Article 134(8) – OJ 1980, 177



Article 12
Consolidation of Complaints
(1) If several complaints are made relating to the same or different acts of the same professional representative, they may
be considered in the same proceedings.

(2) If several complaints relating to different professional representatives are designated to be considered by the Chamber
in a common composition, the Chamber may deal with these complaints in consolidated proceedings with the consent of the
professional representatives concerned. Such consent shall not be required in cases dealing only with failure to pay
subscriptions in accordance with Article 6, paragraph 1, of the Regulation on the Establishment of an Institute of Professional
Representatives before the European Patent Office, hereinafter called the “Establishment Regulation”.

Article 13
Oral proceedings
(1) If oral proceedings are to take place, the Chamber shall endeavour to ensure that all relevant information and documents
have been provided before the hearing.

(2) The Chamber may send with the invitation to oral proceedings a communication drawing attention to matters which
seem to be of special significance, or to the fact that questions appear no longer to be contentious, or containing other
observations that may help concentration on essentials during the oral proceedings.

(3) If oral proceedings take place, the Chamber shall endeavour to ensure that each case is ready for decision at the
conclusion of the oral proceedings, unless there are special reasons to the contrary.

Article 14
Communications to the Professional Representative concerned
If, before a decision is taken, the Chamber deems it expedient to communicate with the professional representative
concerned regarding a possible appreciation of substantive or legal matters, such communication shall be made in such a
way as not to imply that the Chamber is in any way bound by it.

Article 15
Deliberations preceding Decisions
If the members of the Chamber are not all of the same opinion, the Chamber shall meet to deliberate regarding the decision
to be taken. No other person except other members of the Disciplinary Committee authorised by the Chairman of the
Chamber to attend as observers, the Registrar and any interpreters attending in accordance with Article 10 hereof may be
present during deliberations of the Chamber.

Article 16
Order of voting
(1) During the deliberations between members of the Chamber, the rapporteur’s opinion shall be heard first and, if the
rapporteur is not the Chairman, the Chairman’s last.

(2) If voting is necessary, the same sequence shall be followed save that if the Chairman is also the rapporteur, he shall
vote last. Abstentions shall not be permitted.

Article 17
Decisions
(1) Unless the complaint is dismissed, the decision shall state which Rule of Professional Conduct has been violated and
which recommendation, if any, made in accordance with Article 4(c) of the Establishment Regulation, has not been observed.
Rule 68, paragraph 2, of the Implementing Regulations to the European Patent Convention shall apply mutatis mutandis.

(2) A decision shall be signed by the Chairman of the Chamber.

Article 18
Procedure following summary dismissal of a Complaint
If a complaint is summarily dismissed by a Chamber on the ground that it clearly discloses no facts upon which an allegation
of breach of the Rules of Professional Conduct could be made against the professional representative concerned so that it is,
therefore, not necessary to call upon him to present a defence, then:

a)    the complainant shall be informed accordingly by letter;

b)    the persons mentioned in Article 7, paragraph 4 hereof shall be sent copies of the said letter and of the decision;



112
                                                                                               Article 134(8) – OJ 1980, 183




c) the professional representative concerned shall be sent a copy of the said letter, a copy of the complaint and a copy of
the decision.

Article 19
Procedure following a Decision
(1) It is a matter for the discretion of the Chamber whether the complainant shall be informed of the result of the proceedings
by being sent a copy of the decision or in some other manner.

(2) Following a decision to refer the matter in accordance with Article 6, paragraph 2 (c), of the Discipline Regulation, the
Chamber concerned shall transmit to the Disciplinary Board:

a) the name and address of the professional representative concerned;
b) the complaint;
c) any defence filed;
d) any comments of members of the Chamber and of the Presidents of the Council of the Institute and the European Patent
Office respectively;
e) an indication of the language of the proceedings (if any);
f)   the decision taken by the Chamber;
g) any other documents which the Chamber considers relevant.

Article 20
Publications of Decisions
It shall be within the discretionary power of the Chamber to authorise the President of the Council of the Institute wholly or
partly to communicate decisions to the members of the Institute or to publish decisions without, however, revealing the
identity of the professional representative concerned and the complainant, unless they respectively consent to be named.

Article 21
Entry into Force
These Additional Rules of Procedure shall enter into force on the date on which they are approved by the Administrative
Council of the European Patent Organisation.

Done at Munich, 9 April 1980.
For the Disciplinary Committee of the Institute of Professional Representatives before the European Patent Office
The Chairman
R. Sieders


                                                                                                                           Article 134(8) – OJ 1980, 183




REPRESENTATION
Additional Rules of Procedure of the Disciplinary Board
of the European Patent Office

OJ 1980, 183
The Disciplinary Board of the European Patent Office provided for in Article 5 (b) of the Regulation on Discipline for
Professional Representatives of 21 October 1977 (hereinafter called the “Discipline Regulation”) hereby adopts under
Article 25, paragraph 2, thereof, the following Additional Rules of Procedure:

Article 1
Business Distribution Scheme
(1) The Chairman of the Disciplinary Board shall, at the beginning of each working year, draw up a scheme for handling all
matters to be dealt with during the year, designating the members responsible for the examination of all matters and their




                                                                                                                           113
Article 134(8) – OJ 1980, 183




alternates and including a rota drawn up in accordance with Article 10, paragraph 4, of the Discipline Regulation. The scheme
may be amended during the working year.

(2) Where, in accordance with Article 9, paragraph 1, of the Discipline Regulation, the President of the European Patent
Office has set up more than one Board, the Chairmen of the Boards shall, at the beginning of each working year, jointly
designate the Board responsible for each matter to be dealt with during the year.

Article 2
Replacement of members
(1) Reasons for replacement by alternates shall, in particular, include conflicting interests, sickness, excessive workload and
commitments which cannot be avoided.

(2) Any member requesting to be replaced by an alternate shall inform the Chairman of the Disciplinary Board of his
unavailability without delay.

Article 3
Exclusion and Objection
(1) If the Disciplinary Board has knowledge of a possible reason for exclusion or objection which does not originate from the
member himself or from the professional representative concerned, then the Disciplinary Board shall decide as to the action
to be taken without the participation of the member concerned shall be replaced by his alternate.

(2) The member concerned shall be invited to present his comments as to whether there is a reason for exclusion.

(3) Before a decision is taken on the exclusion of a member, there shall be no further proceedings in the case.

Article 4
The Registrar
(1) The Chairman of the Disciplinary Board shall appoint an employee of the European Patent Office to act as Registrar to
the Disciplinary Board. A further employee of the European Patent Office shall be appointed by the Chairman to act as a
deputy Registrar where the Registrar is unable to act.

(2) The Registrar shall, in particular, monitor any time limits relating to matters before the Disciplinary Board, including the
time limit prescribed in Article 6, paragraph 3, of the Discipline Regulation.

Article 5
Rapporteurs
(1) The Chairman of the Disciplinary Board shall for each matter designate a legally qualified member, or himself, as
rapporteur.

(2) The rapporteur may conduct preparatory inquiries in accordance with Articles 15 and 25, paragraph 1, of the Discipline
Regulation: he shall prepare draft communications, carry out other preliminary work and draft decisions.

(3) Draft communications and decisions shall be sent to the other members of the Disciplinary Board, who shall either
approve them or make suggestions for amendment. If no agreement can be reached by this can be reached by this means,
the Board shall meet to decide jointly on the final text.

(4) Communications shall be signed by the rapporteur on behalf of the Disciplinary Board.

(5) The rapporteur shall make the preparations for meetings and oral proceedings. He will set out the issues that need to be
determined and, if necessary, send a communication to the professional representative concerned to this effect.

(6) If the rapporteur considers that his knowledge of the language of the proceedings is insufficient for drafting
communications or decisions, he may draft these in one of the other official languages of the European Patent Office. The
drafts shall be translated by the European Patent Office into the language of the proceedings and the translations shall be
checked by the rapporteur or by another member of the Disciplinary Board.

Article 6
Transmission of Documents
To effect a transfer under Article 6, paragraph 4(b), of the Discipline Regulation, the Chairman of the Disciplinary Board shall:

a)    notify the Chairman of the Disciplinary Committee and the professional representative concerned of the transfer;



114
                                                                                               Article 134(8) – OJ 1980, 183




b)   set the Chairman of the Disciplinary Committee and the professional representative a time limit for the transmission of:

i)   the name and address of the professional representative concerned;
ii) the complaint;
iii) any Defence filed;
iv) any comments of members of the Chamber and of the Presidents of the Council of the Institute of Professional
representatives and the European Patent Office respectively;
v) an indication of the language of the proceedings (if any);
vi) the decision taken by the Chamber;
vii) any other documents which the Chamber considers relevant.

Article 7
Minutes
(1) Minutes of oral proceedings and of the taking of evidence shall be drawn up by the Registrar or such other employee of
the European Patent Office as the Chairman of the Disciplinary Board may nominate. Rule 76 of the Implementing
Regulations to the European Patent Convention shall apply mutatis mutandis to the taking of such minutes.

(2) The Chairman of the Disciplinary Board may direct that tape recordings of any oral evidence and of any oral statements
may be made in addition to minutes of such evidence and statements.

Article 8
Language of the Proceedings
(1) The language of the proceedings shall be the official language of the European Patent Office in which the proceedings
were conducted before the Disciplinary Committee of the Institute of Professional Representatives but Rules 2 and 3,
paragraph 1,of the Implementing Regulations to the European Patent Convention shall apply mutatis mutandis to proceedings
before the Disciplinary Board.

(2) Where no proceedings have been conducted before the Disciplinary Committee or in circumstances where no language
of the proceedings has been designated, the Disciplinary Board shall decide on the language of the proceedings.

(3) If the professional representative concerned so requires, he shall receive translations into his own language of all
documents relating to his case and he may defend himself in his own language.

(4) If required, the Chairman of the Disciplinary Board shall make arrangements for interpretation during oral proceedings,
the taking of evidence and the deliberations of the Disciplinary Board.

Article 9
Change in the composition of the Board
(1) If the composition of the Disciplinary Board is changed after oral proceedings, the professional representative concerned
shall be informed that, at his request, fresh oral proceedings shall be held before the Board in its new composition. Fresh oral
proceedings shall also be held if so requested by the new member and if the other members of the Board have given their
agreement.

(2) The new member shall be bound to the same extent as the other members by an interim decision which has already
been taken.

(3) If, when the Board has already reached a final decision a member of the Board is unable to act, he shall not be replaced
by his alternate. If the Chairman is unable to act, the legally qualified member of the Board having the longer service on the
Board, or in the case where members have the same length of service, the elder member, shall sign the decision on behalf of
the Chairman.

Article 10
Consolidation of Proceedings
(1) If several matters relating to the same professional representative are pending before the Disciplinary Board, these
matters may be considered in the same proceedings.

(2) If several complaints relating to different professional representatives are designated to be considered by the Disciplinary
Board in a common composition, the Disciplinary Board may deal with these complaints in consolidated proceedings with the
consent of the professional representatives concerned. Such consent shall not be required in cases dealing only with failure




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Article 134(8) – OJ 1980, 183




to pay subscriptions in accordance with Article 6, paragraph 1, of the Regulation on the Establishment of an Institute of
Professional Representatives before the European Patent Office, hereinafter called the “Establishment Regulation”.

Article 11
Oral Proceedings
(1) If oral proceedings are to take place, the Disciplinary Board shall endeavour to ensure that all relevant information and
documents have been provided before the hearing.

(2) The Board may send with the summons to oral proceedings a communication drawing attention to matters which seem
to be of special significance, or to the fact that questions appear no longer to be contentious, or containing other observations
that may help concentration on essentials during the oral proceedings.

(3) If oral proceedings take place, the Board shall endeavour to ensure that each case is ready for decision at the
conclusion of the oral proceedings, unless there are special reasons to the contrary.

Article 12
Communications to the Professional Representative concerned
If, before a decision is taken, the Disciplinary Board deems it expedient to communicate with the professional representative
concerned regarding a possible appreciation of substantive or legal matters, such communication shall be made in such a
way as not to imply that the Board is in any way bound by it.

Article 13
Deliberations preceding Decisions
If the members of the Disciplinary Board are not all of the same opinion, the Board shall meet to deliberate regarding the
decision to be taken. No other person except the Registrar and any interpreters attending in accordance with Article 8 hereof
may be present during deliberations of the Board.

Article 14
Order of Voting
(1) During the deliberations between members of the Disciplinary Board, the rapporteur’s opinion shall be heard first and, if
the rapporteur is not the Chairman, the Chairman’s last.

(2) If voting is necessary, the same sequence shall be followed save that if the Chairman is also the rapporteur, he shall
vote last. Abstentions shall not be permitted.

Article 15
Decisions
(1) Unless the matter is dismissed, the decision shall state which Rule of Professional Conduct has been violated and
which, if any, recommendation, made in accordance with Article 4 (c) of the Establishment Regulation, has not been
observed. Rules 66, paragraph 2, and 68, paragraph 2, of the Implementing Regulations to the European Patent Convention
shall apply mutatis mutandis.

(2) A decision shall be signed by the Chairman of the Disciplinary Board and by the Registrar.

Article 16
Publications of Decisions
It shall be within the discretionary power of the Disciplinary Board to publish decisions without, however, revealing the identity
of the professional representative concerned or the complainant, unless they respectively consent to be named.

Article 17
Entry into Force
These Additional Rules of Procedure shall enter into force on the date on which they are approved by the Administrative
Council of the European Patent Organisation.

Done at Munich, 9 April 1980.
For the Disciplinary Board of the European Patent Office
The Chairman
J.C.A. Staehelin




116
                                                                                               Article 134(8) – OJ 1980, 188



                                                                                                                           Article 134(8) – OJ 1980, 188




REPRESENTATION
Additional Rules of Procedure of the Disciplinary Board of
Appeal of the European Patent Office

OJ 1980, 188
The Disciplinary Board of Appeal of the European Patent Office provided for in Article 5(c) of the Regulation on Discipline for
Professional Representatives of 21 October 1977 (hereinafter called the “Discipline Regulation”) hereby adopts under
Article 25, paragraph 2, thereof, in lieu of the provisional Additional Rules of Procedure adopted on 30 November 1979 and
approved by a Decision of the Administrative Council of that date, the following Additional Rules of Procedure:

Article 1
Business Distribution Scheme
The Chairman of the Disciplinary Board of Appeal shall, at the beginning of each working year, draw up a scheme for
handling all appeals that may be filed during the year, designating the members responsible for the examination of all appeals
and their alternates and including a rota drawn up in accordance with Article 10, paragraph 4, of the Discipline Regulation.
The scheme may be amended during the working year.

Article 2
Replacement of members
(1) Reasons for replacement by alternates shall, in particular, include conflicting interests, sickness, excessive workload and
commitments which cannot be avoided.

(2) Any member requesting to be replaced by an alternate shall inform the Chairman of the Disciplinary Board of Appeal of
his unavailability without delay.

Article 3
Exclusion and objection
(1) If the Disciplinary Board of Appeal has knowledge of a possible reason for exclusion or objection which does not
originate from the member himself or from any party to the proceedings, then the Disciplinary Board of Appeal shall decide as
to the action to be taken without the participation of the member concerned. For the purpose of taking this decision, the
member concerned shall be replaced by his alternate.

(2) The member concerned shall be invited to present his comments as to whether there is a reason for exclusion.

(3) Before a decision is taken on the exclusion of a member, there shall be no further proceedings in the case.

Article 4
The Registrar
The Registrar to the Boards of Appeal of the European Patent Office shall act as Registrar to the Disciplinary Board of
Appeal. A further employee of the European Patent Office shall be appointed by the Chairman of the Disciplinary Board of
Appeal to act as deputy Registrar where the Registrar is unable to act.

Article 5
Rapporteurs
(1) The Chairman of the Disciplinary Board of Appeal shall for each appeal designate a legally qualified member, of himself,
as rapporteur.

(2) The rapporteur may conduct preparatory inquiries in accordance with Articles 15 and 25, paragraph 1, of the Discipline
Regulation; he shall prepare draft communications, carry out other preliminary work and draft decisions.

(3) Draft communications and decisions shall be sent to the other members of the Disciplinary Board of Appeal, who shall
either approve them or make suggestions for amendment. If no agreement can be reached by this means, the Board shall
meet to decide jointly on the final text.

(4) Communications shall be signed by the rapporteur on behalf of the Disciplinary Board of Appeal.




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Article 134(8) – OJ 1980, 188




(5) The rapporteur shall make the preparations for meetings of the Disciplinary Board of Appeal and for oral proceedings.
He will set out the issues that need to be determined and, if necessary, will send a communication to the parties to this effect.

(6) If the rapporteur considers that this knowledge of the language of the proceedings is insufficient for drafting
communications or decisions, he may draft these in one of the other official languages of the European Patent Office. The
drafts shall be translated by the European Patent Office into the language of the proceedings and the translations shall be
checked by the rapporteur or by another member of the Disciplinary Board of Appeal.

Article 6
Filing of an Appeal
(1) A notice of appeal shall contain the name and address of the appellant and shall identify the decision appealed against
and shall state which parts of the decision are appealed against or whether the whole decision is appealed against and the
relief which the appellant seeks. It shall be signed by the appellant or by his representative. A representative signing a notice
of appeal shall produce his written authorisation to act on behalf of the appellant.

(2) A notice of appeal and any written statement setting out the grounds of appeal may be filed by telex or telegram but a
signed document reproducing the contents of every such notice and statement shall be filed within two weeks of the receipt of
the telex or telegram.

Article 7
Transmission of Appeal Documents
(1) The Chairman of the Disciplinary Board of Appeal shall cause a copy of every notice of appeal and statement of grounds
filed by a professional representative to be sent to the President of the Council of the Institute of Professional
Representatives, the President of the European Patent Office and the Chairman of the Disciplinary Body against whose
decision the appeal has been lodged.

(2) The President of the Council of the Institute of Professional Representatives and the President of the European Patent
Office respectively shall ensure that a copy of every notice of appeal and statement of grounds filed by himself is sent direct
to the professional representative concerned or to his representative.

Article 8
Minutes
(1) Minutes of oral proceedings and of the taking of evidence shall be drawn up by the Registrar or such other employee of
the European Patent Office as the Chairman of the Disciplinary Board of Appeal may nominate. Rule 76 of the Implementing
Regulations to the European Patent Convention shall apply mutatis mutandis to the taking of such minutes.

(2) The Chairman of the Disciplinary Board of Appeal may direct that tape recordings of any oral evidence and of any oral
statements may be made in addition to minutes of such evidence and statements.

Article 9
Language of the Proceedings
(1) The Language of the proceedings shall be the official language of the European Patent Office in which the proceedings
were conducted before the Disciplinary Body whose decision is appealed against but Rules 2 and 3, paragraph 1, of the
Implementing Regulations to the European Patent Convention1 shall apply mutatis mutandis to proceedings before the
Disciplinary Board of Appeal.

(2) If oral proceedings are to take place and, at least two weeks before the date laid down for such proceedings, the
professional representative concerned requests interpretation into and from his own language, the Chairman of the Board
shall make the necessary arrangements.

(3) If the professional representative concerned so requires, he shall receive translations into his own language of all
documents relating to his case and he may defend himself in his own language.

Article 10
Change in the composition of the Board
(1) If the composition of the Disciplinary Board of Appeal is changed after oral proceedings, each party concerned shall be
informed that, at his request, fresh oral proceedings shall be held before the Disciplinary Board of Appeal in its new



1
    Rule 3 was deleted by decision of the Administrative Council of 07.12.1990 which entered into force on 01.06.1991 (OJ EPO 1991, 4 ff).




118
                                                                                                Article 134(8) – OJ 1980, 188




composition. Fresh oral proceedings shall also be held if so requested by the new member and if the other members of the
Disciplinary Board of Appeal have given their agreement.

(2) The new member shall be bound to the same extent as the other members by an interim decision which has already
been taken.

(3) If, when the Board has already reached a final decision, a member of the Board is unable to act, he shall not be replaced
by his alternate. If the Chairman is unable to act, the legally qualified member of the Board having the longer service on the
Board, or in the case where members have the same length of service, the elder member, shall sign the decision on behalf of
the Chairman.

Article 11
Consolidation of Appeal Proceedings
(1) If several appeals are filed from a decision, these appeals shall be considered in the same proceedings.

(2) If appeals are filed from separate decisions and are designated to be considered by the Disciplinary Board of Appeal in a
common composition, the Board may deal with these appeals in consolidated proceedings with the consent of the parties.

Article 12
Remission to the Disciplinary Committee or the Disciplinary Board or the Examination Board
If fundamental deficiencies are apparent in proceedings before the Disciplinary Body whose decision is under appeal or
before the Examination Board, the Disciplinary Board of Appeal shall remit a case to that Body or Board, unless special
reasons present themselves for doing otherwise.

Article 13
Oral Proceedings
(1) If oral proceedings are to take place, the Disciplinary Board of Appeal shall endeavour to ensure that all relevant
information and documents have been provided before the hearing.

(2) The Board may send with the summons to oral proceedings a communication drawing attention to matters which seem
to be of special significance, or to the fact that questions appear no longer to be contentious, or containing other observations
that may help concentration on essentials during the oral proceedings.

(3) If oral proceedings take place, the Board shall endeavour to ensure that each case is ready for decision at the
conclusion of the oral proceedings, unless there are special reasons to the contrary.

Article 14
Communications to the Parties
If, before a Decision is taken, the Disciplinary Board of Appeal deems it expedient to communicate with the parties concerned
regarding a possible appreciation of substantive or legal matters, such communication shall be made in such a way as not to
imply that the Board is in any way bound by it.

Article 15
Deliberations preceding Decisions
If the members of the Disciplinary Board of Appeal are not all of the same opinion, the Board shall meet to deliberate
regarding the decision to be taken. No other person except the Registrar and any interpreters attending in accordance with
Article 9 hereof may be present during deliberations of the Board.

Article 16
Order of Voting
(1) During the deliberations between members of the Disciplinary Board of Appeal, the rapporteur’s opinion shall be heard
first and, if the rapporteur is not the Chairman, the Chairman’s last.

(2) If voting is necessary, the same sequence shall be followed save that if the Chairman is also the rapporteur, he shall
vote last. Abstentions shall not be permitted.




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Article 134(8) – OJ 1998, 211



Article 17
Decisions
(1) Unless the effect of a decision is to uphold the dismissal of the matter or to remit the case as provided for in Article 12
hereof, the decision shall state which Rule of Professional Conduct has been violated and which, if any, recommendation
made in accordance with Article 4(c) of the Regulation on the Establishment of an Institute of Professional Representatives
before the European Patent Office, has not been observed. Rule 66, paragraph 2, of the Implementing Regulations to the
European Patent Convention shall apply mutatis mutandis.

(2) A decision shall be signed by the Chairman of the Disciplinary Board of Appeal and by the Registrar.

Article 18
Publication of Decisions
It shall be within the discretionary power of the Disciplinary board of Appeal to publish decisions without, however, revealing
the identity of the parties concerned or the complainant, unless they respectively consent to be named.

Article 19
Entry into Force
These Additional Rules of Procedure shall enter into force on the date on which they are approved by the Administrative
Council of the European Patent Organisation. Simultaneously with their entry into force, the Additional Rules of Procedure of
the Disciplinary Board of Appeal adopted by that Board on 30 November 1979 and approved by the Administrative Council of
the European Patent Organisation by a Decision of the same date, shall cease to have effect.

Done at Munich, 9 April 1980.
For the Disciplinary Board of Appeal of the European Patent Office
The Chairman
G. Trotta


                                                                                                                           Article 134(8) – OJ 1998, 211




Notice from the Vice-President, Directorate-General 3
concerning decisions taken by the Disciplinary Board of
Appeal

OJ 1998, 211
Since 1 April 1998, all decisions taken by the Disciplinary Board of Appeal since 1994 (when the new Regulation on the
European qualifying examination for professional representatives was introduced, see OJ EPO 1994, 7) have been available
to the public, either in photocopy form from the EPO’s Munich Information Office or on CD-ROM ESPACE-Legal 1998/001.




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                                                                                                                                      Article 134(8) – OJ 2006, Suppl. to OJ 12/2006, page 1




EUROPEAN QUALIFYING EXAMINATION
Decision of the Administrative Council of 9 December 1993
adopting a new Regulation on the European qualifying
examination for professional representatives1

OJ 2006, Supplement to OJ 12/2006, page 1
THE ADMINISTRATIVE COUNCIL OF THE EUROPEAN PATENT ORGANISATION,

Having regard to the European Patent Convention, and in particular Article 134, paragraphs 2(c) and (8)(a), thereof,

Having regard to the existing Regulation on the European Qualifying Examination for professional representatives before the
European Patent Office,

On a proposal from the President of the European Patent Office,

HAS DECIDED AS FOLLOWS:

Article 1
The Regulation on the European Qualifying Examination for professional representatives as adopted on 21 October 1977
(CA/D3/77) and last amended by decision of the Administrative Council of 5 July 1991 (CA/D4/91) is replaced by the text
contained in the annex to this decision.

Article 2
(1) This decision shall enter into force on 1 May 1994.

(2) Articles 14, 15, 24, paragraph 2, and 28, paragraph 1, of the Regulation referred to in Article 1 of this decision shall be
    applicable from 10 December 1993.

Done at Munich, 9 December 1993.
For the Administrative Council
The Chairman
Per Lund THOFT

ANNEX

Article 1
Holding of the examination
A European qualifying examination shall normally be held once a year. The period between two examinations shall not
exceed twenty-four months.

Article 22
The Examination Board
(1) The examination shall be organised and conducted by a Board of nine members consisting of:

(a) a Chairman appointed by the President of the European Patent Office (hereinafter called "the EPO") from among
    employees or retired employees of the EPO, after consulting the Council of the Institute of Professional Representatives
    before the EPO (hereinafter called "the Institute"),

(b) four members of the Institute appointed by the President of the EPO acting on a proposal from the President of the
    Council of the Institute, and

(c)    four employees of the EPO appointed by its President.


1
      See OJ EPO 1994, 7.
2
      Amended by decision of the Administrative Council of 24.10.2002 which entered into force on 24.10.2002 (OJ EPO 2002, 565 ff).




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Article 134(8) – OJ 2006, Suppl. to OJ 12/2006, page 1




(2) Of the five members who are employees or retired employees of the EPO only two members shall be eligible to continue
    and be reappointed as members after their retirement.

(3) Members of the Examination Board who satisfy the requirements of Article 10(2) shall not be entitled to enrol for the
    examination. Former members of the Examination Board shall be entitled to enrol, at the earliest, for the third
    examination subsequent to the expiry of their term of office.

Article 3
Appointment of the Board
(1) The members of the Board shall be appointed for a period of four years, subject to paragraph 2. Upon expiry of this
     period they may be reappointed.

(2) The appointment of members shall be organised in such a way that one half of the members in each of the categories
    referred to in Article 2(1)(b) and (c) shall be renewed every two years.

Article 43
Examination committees
(1) For the purpose of conducting the examination the Board shall appoint one or more examination committees.

(2) Each committee shall be set up on the basis of equal numbers of employees of the EPO and of members of the Institute.
    However, if the members of a committee exceed four in number, the proportion of employees of the EPO shall be
    between one quarter and one half of the total number of members of that committee.

(3) A maximum of three members of the Board may be appointed members of the committees.

(4) A member of a committee who retires from the EPO shall be eligible to continue and be reappointed as a member and
    shall for the purposes of this Regulation be considered an employee of the EPO.

(5) Article 2(3) shall apply mutatis mutandis to members of the examination committees.

Article 5
Meetings of the Board
The Board shall be convened by its chairman. Five members shall constitute a quorum. Decisions of the Board may be taken
by written procedure, provided no member objects.

Article 6
The Examination Secretariat
The EPO shall provide the Board and its committees with the necessary administrative facilities in the form of an Examination
Secretariat.

Article 7
Powers of the Board
(1) The Board shall give the members of the examination committees the necessary instructions for preparing the
     examination papers, examine the drafts and make the final selection of the texts.

(2) The Board shall in particular also decide on the list of books and documents which may be used by candidates and shall
    instruct the Examination Secretariat concerning the measures to be taken in respect of candidates found to be cheating
    or attempting to cheat.

(3) The Board shall take note of the grades proposed to it by the examination committees, determine the grades for each
    paper and decide whether a candidate has passed or failed. No member of the Board who was a member of the
    committee which marked the papers of the candidate in question shall take part in this decision.

(4) The Board shall draw up instructions concerning the qualifications or knowledge required for enrolment. A set of
    instructions, including a list of recognised qualifications, shall be published annually.

(5) Each year the Board shall transmit to the Examination Secretariat a report on each examination paper (examiners'
    report) prepared by the relevant examination committee for inclusion in an annual compendium.

(6) The Board shall draw up implementing provisions to this Regulation.

3
    Amended by decision of the Administrative Council of 24.10.2002 which entered into force on 24.10.2002 (OJ EPO 2002, 565 ff).




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Article 8
Duties of the committees
The examination committees shall be responsible for:

(a) preparing the examination papers in accordance with the instructions given by the Board and, where relevant, indicating
    the relative importance of the individual questions;

(b) marking the answers to the examination papers, each answer being marked separately by two committee members;

(c)   submitting the above-mentioned answers to the Board with proposals for the grades to be awarded;

(d) drawing up a list of references to landmark decisions in EPO case law as referred to in Article 12, and submitting it to the
    Board for annual publication.

Article 9
Duties of the Examination Secretariat
(1) The Examination Secretariat shall assist the Board and its committees in their duties.

(2) It shall be responsible for publication of

(a) the implementing provisions mentioned in Article 7(6),

(b) the instructions mentioned in Article 7(4),

(c)   the compendium mentioned in Article 7(5),

(d) the list mentioned in Article 8(d), and

(e) the notice mentioned in Article 20.

(3) The Secretariat shall also be responsible for supplying other information concerning the examination.

(4) In accordance with instructions drawn up by the Board, the Secretariat shall decide on the enrolment of candidates. It
    shall arrange for the holding of the examinations and take the necessary measures for their supervision.

Article 10
Conditions for enrolment
(1) Candidates shall be enrolled for the examination on request provided they possess a university-level scientific or
     technical qualification or are able to satisfy the Secretariat that they possess an equivalent level of scientific or technical
     knowledge, and fulfil the conditions specified in paragraph 2.

(2) Candidates who apply for enrolment must be able to

(a) satisfy the Secretariat that at the date of the examination they have

      (i)     completed a full-time training period of at least three years in one of the Contracting States under the supervision
              of one or more persons entered on the list referred to in Article 134(1) of the European Patent Convention
              (hereinafter called "the EPC"), as an assistant to that person or those persons, in which period they have taken
              part in a wide range of activities pertaining to European patent applications or European patents, or

      (ii)    worked full-time for a period of at least three years in the employment of a natural or legal person whose
              residence or place of business is within the territory of the Contracting States and have represented their
              employer before the EPO in accordance with Article 133(3) EPC while taking part in a wide range of activities
              pertaining to European patent applications or European patents, or

      (iii)   worked full-time during a period of at least three years as an assistant to, and under the direct supervision of, one
              or more persons as defined in sub-paragraph (ii) in a wide range of activities pertaining to European patent
              applications or European patents, or

(b) satisfy the Secretariat that at the date of the examination they have performed the duties of examiner at the EPO for at
    least four years.




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Article 134(8) – OJ 2006, Suppl. to OJ 12/2006, page 1




(3) The duration of the periods of professional activity referred to in paragraph 2(a) may be aggregated to make up a total
    full-time training period of three years.

(4) In determining the periods of activity referred to in paragraph 2(a) the Secretariat shall also take into account candidates'
    activities in proceedings relating to national patent applications and national patents.

(5) An application for enrolment shall not be deemed to have been filed until the prescribed fee has been paid.

Article 11
Remission of periods of professional activity
Under the conditions laid down in the instructions referred to in Article 7(4), the Secretariat may grant a reduction of up to one
year in the duration of the periods of professional activity defined in Article 10(2).

Article 12
Examination syllabus
The examination shall establish whether a candidate has:

(a) a thorough knowledge of:

      (i)     European patent law as laid down in the EPC and the Agreement relating to Community Patents;

      (ii)    the Paris Convention (Articles 1 - 5quater and Article 11);

      (iii)   the Patent Cooperation Treaty;

      (iv)    all decisions of the Enlarged Board of Appeal and landmark decisions of EPO case law as specified in the list
              referred to in Article 8(d), and

(b) a general knowledge of the national laws of:

      (i)     the Contracting States to the extent that they apply to European patent applications and European patents;

      (ii)    the United States of America and Japan to the extent that they are of importance in connection with proceedings
              before the EPO.

Article 13
The examination papers
(1) The examination shall comprise written papers only.

(2) The Board shall determine the number of examination papers and the time allowed for each.

(3) The examination papers shall at least cover:

(a) the drafting of claims and the introductory part of a European patent application on the basis of such information as is
    normally available to a professional representative for the purposes of carrying out this task;

(b) the preparing of a reply to an official letter in which prior art has been cited;

(c)   the drafting of a notice of opposition to a European patent;

(d) the answering of legal questions and the legal assessment of a specific situation.

(4) The Board may allow candidates to choose, in certain papers, one of two or three technical specialisations.

Article 14
Modular sitting of the examination
(1) The first time a candidate sits the examination it may be sat in two modules. Candidates who have availed themselves of
     this possibility shall sit at least the second module within the next three subsequent examinations. If a candidate
     chooses to sit the first module again, together with the second module, it shall count as a first sitting and any result
     previously obtained shall no longer be valid.

(2) The Board may lay down further details in its implementing provisions.




124
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Article 15
Languages
(1) The examination papers shall be drawn up in the three official languages of the EPO and all candidates shall receive
     them in all three languages.

(2) At least three separate and different documents on the state of the art shall be supplied with the examination paper
    mentioned in Article 13(3)(c). Such documents shall each be drawn up in one of the official languages and be
    accompanied by a translation into at least one of the other official languages. The three official languages shall always
    be equally represented. The aforementioned examination paper shall be accompanied by a glossary of the specialist
    terminology contained in the prior art documents in all the languages requested under paragraph 3.

(3) The candidates' answers should be given in one of the three official languages. Nevertheless, candidates may, if they so
    request when enrolling for the examination, submit their answers in another language being an official language of a
    Contracting State. In such cases, the Secretariat shall have a translation made in one of the official languages of the
    EPO and shall submit the translation together with the original answers to the appropriate examination committee.

Article 16
Marking of papers
The Board shall give the members of the examination committees the necessary instructions to ensure that candidates'
answers are marked in a uniform manner.

Article 17
Passing the examination
(1) Subject to paragraph 2, a candidate shall be declared to have passed the examination if he passes each of the
     examination papers or if, the first time he sits the examination, he obtains the minimum grades required under the
     implementing provisions.

(2) Candidates who have performed the duties of examiner at the EPO for at least four years shall be declared to have
    passed the examination provided they fulfil the requirements of paragraph 1 and are able to satisfy the Secretariat that
    they have spent at least two years in any of the capacities defined in Article 10(2)(a).

Article 18
Resitting the examination in full or in part
A candidate who fails the examination may only resit a paper or papers he did not pass.

Article 19
Fees
(1) The President of the EPO shall specify the fees referred to in Articles 10(5) and 27(2) after the Institute has been
     consulted. The fee for a modular sitting or a resit in part shall always constitute at least 50% of the enrolment fee for an
     examination in full. When a candidate enrols for the second time for the examination in full a surcharge of 50% of the
     basic fee shall be levied on enrolment and a surcharge of 100% on enrolments for examinations in full thereafter.

(2) The translations referred to in Article 15(3) shall not require any additional fee and may be prepared by the Institute.

Article 20
Notice of the examination
A notice of the examination shall be published in the Official Journal of the EPO specifying the dates of the sessions, the
dates by which applications for enrolment must be filed and the documents required.

Article 21
Applications for enrolment
(1) Applications for enrolment for the examination shall be addressed to the Secretariat.

(2) Applications for enrolment shall state the family name, given names, address and nationality of the candidate and shall
    be accompanied by:

(a) evidence of possession of the qualification or equivalent level of scientific or technical knowledge as required by Article
    10(1), and




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Article 134(8) – OJ 2006, Suppl. to OJ 12/2006, page 1




(b) a certificate or certificates issued by a professional representative or by the candidate's employer, attesting to the
    completion of a period of training or employment required by Article 10(2)(a) and indicating the nature and duration of
    the duties performed by the candidate, or

(c)    a certificate issued by the EPO, attesting to the fact that the candidate has performed the duties of examiner at the EPO
       for at least four years;

(d) evidence of circumstances which may give grounds for remission as referred to in Article 11.

(3) Where appropriate, applications for enrolment shall also state the language in which the candidate wishes to submit his
    or her answers in accordance with Article 15(3).

Article 22
Enrolment
(1) The Secretariat shall inform candidates individually in writing whether or not their application for enrolment has been
     accepted. In cases of refusal a statement of grounds shall be given and candidates may request a reasoned decision.

(2) Candidates enrolled shall also be individually informed in writing of the date, time and place of the examination. They
    shall furthermore be sent a notice setting forth both this Regulation and other provisions laid down by the Board which
    are of relevance to the candidates.

Article 23
Examination in several centres
Where the examination is to be held in several centres at different locations, the same papers shall be distributed and sat in
all centres simultaneously.

Article 24
Anonymity
(1) Candidates' anonymity shall be respected when their answers are marked.

(2) Candidates' answers may be published and used at any time for research, statistical or training purposes provided
    anonymity is respected.

Article 254
Results
(1) The President of the EPO shall publish in the Official Journal of the EPO an alphabetical list of candidates who have
     been successful in the examination.

(2) The Secretariat shall send each candidate a copy of his or her own answers.

(3) The Secretariat shall be responsible for compiling and disseminating statistical information concerning the results of the
    examination. The Board shall decide what information shall be disseminated and to whom.

Article 26
Professional secrecy
Subject to Articles 24(2) and 25, the members of the Board, the members of its committees and the EPO staff members
working in the Secretariat shall be bound to secrecy both during and after their term of office with regard to all matters
concerning the candidates and any deliberations held thereon.

Article 275
Appeals
(1) An appeal shall lie from decisions of the Board and the Secretariat only on grounds of infringement of this Regulation or
     of any provision relating to its application.

(2) Notice of appeal must be filed in writing with the Secretariat within one month of the date of notification of the decision
    appealed against. Notice of appeal shall not be deemed to have been filed until the fee for appeal specified pursuant to
    Article 19 has been paid. Within two months of the date of notification of the decision, a written statement setting out the
    grounds for appeal must be filed.


4
      Amended by decision of the Administrative Council of 24.10.2002 which entered into force on 24.10.2002 (OJ EPO 2002, 565 ff).
5
      Amended by decision of the Administrative Council of 8.6.2000 which entered into force on 1.9.2000 (OJ EPO 2000, 320).




126
                                                                  Article 134(8) – OJ 2006, Suppl. to OJ 12/2006, page 14




(3) If the Board or, in the case of an appeal against a decision of the Secretariat, the Secretariat considers the appeal to be
    admissible and well-founded, it shall rectify its decision and shall order reimbursement of the fee for appeal. If the appeal
    is not allowed within two months, it shall be remitted to the Disciplinary Board of Appeal of the EPO. Notwithstanding
    Article 10(1) of the Regulation on discipline for professional representatives, the Disciplinary Board of Appeal shall
    decide in a composition consisting of two legally qualified members of the EPO and one professional representative. The
    Chairman shall be a legally qualified member.

(4) Part IV of the Regulation on discipline for professional representatives shall apply mutatis mutandis to the procedure
    before the Disciplinary Board of Appeal. If the appeal is admissible and well-founded, the Board of Appeal shall set aside
    the decision appealed against. If the Board of Appeal allows the appeal, or the appeal is withdrawn, it shall order
    reimbursement in full or in part of the fee for appeal if this is equitable in the circumstances of the case.

Article 28
Transitional provisions
(1) Candidates who failed the examination held in 1993 may avail themselves of Article 18. In that case Article 17 applies.
     Any right to a partial resit applicable in 1993 may be exercised in subsequent years.

(2) Article 19(1), third sentence, shall apply to all candidates enrolling for the second time or more in order to sit the
    examination in full.


                                                                                                                          Article 134(8) – OJ 2006, Suppl. to OJ 12/2006, page 14




EUROPEAN QUALIFYING EXAMINATION
Implementing provisions to the Regulation on the European
qualifying examination1

OJ 2006, Supplement to OJ 12/2006, page 14
THE EXAMINATION BOARD,

Having regard to the Regulation on the European qualifying examination for professional representatives of 9 December 1993
(OJ EPO 1994, 7), and in particular Article 7, paragraph 6, and Article 16 thereof,

HAS DECIDED AS FOLLOWS:

Rule 1
The list of landmark decisions, which the examination committees shall draw up in accordance with Article 8(d) REE and
which shall be applicable to the examination of the subsequent year, shall be presented to the Examination Board no later
than at its last meeting before the examination of the current year in order to allow for its publication approximately 12 months
prior to the examination to which it shall apply.

Rule 2
The first module as mentioned in Article 14(1) REE shall consist of papers A and B and the second module of papers C and
D.

Rule 3
Members of the examination committees shall bear in mind that candidates may have written their papers in a language other
than their mother tongue. Faults of grammar or style shall therefore not be penalised. However, any text proposed as part of a
patent specification or application should meet the requirements of the European Patent Convention, in particular Article 84
regarding the clarity of claims.


1
    See OJ EPO 1998, 364 ff.




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Article 134(8) – OJ 2006, Suppl. to OJ 12/2006, page 14



Rule 4
(1) Each answer paper shall be marked on a scale of zero to 100 by the relevant examination committee.

(2) A mark of 50 or more shall be awarded where, on the merits of that paper alone, a candidate can be considered fit to
    practise as a professional representative before the European Patent Office. The grade “PASS” shall be awarded for
    that paper.

(3) Fewer than 50 marks shall be awarded where, on the merits of that paper alone, a candidate cannot be considered fit to
    practise as a professional representative. Subject to paragraph 4, the grade “FAIL” shall be awarded for that paper.

(4) Where a mark of at least 45 but less than 50 is awarded to a paper of a candidate sitting the examination for the first
    time, he can be considered fit to practise as a professional representative provided that he satisfies the conditions laid
    down in Rule 5. The grade “COMPENSABLE FAIL” shall be awarded for that paper. However, if the candidate is not
    declared to have passed the examination under Rule 5 at the first sitting, the paper must be resat.

Rule 5
Subject to Article 17(2) REE, a candidate who sits the examination for the first time shall be declared to have passed it if, but
only if, he satisfies all of the following conditions:

(1) he has not been awarded a “FAIL” grade in any of the examination papers, and

(2) for the purposes of the minimum grades to pass, his total aggregate mark in the four papers is at least 200, and

(3) he has been awarded a “PASS” grade in at least two papers.

Rule 62
(1) Details of the marking shall be contained on the marking sheets.

(2) The answers and marking sheets shall be sent to all candidates.

(3) (deleted)

Rule 7
After the first sitting of the examination under the Regulation on the European qualifying examination as adopted on 9
December 1993, an unsuccessful candidate may at a later examination only resit one or more of the papers he has failed.

Rule 8
(1) Article 18 REE shall apply to candidates who fail the examination in 1994 and subsequent years. Candidates who had a
    right to a partial resit applicable in 1993 or who failed the examination in 1993 may, at their first subsequent attempt at
    the examination, avail themselves of Article 18 REE or choose to resit the examination in full; Rule 5 shall apply to this
    full resit.

(2) Article 18 REE shall not apply to candidates who failed the examination in 1992 and earlier years and have no right to a
    partial resit applicable in 1993. These candidates will have to resit the examination in full; Rule 5 shall apply to this full
    resit.

(3) For application of Article 18 REE, only the results obtained at the last attempt at the paper or papers concerned shall be
    taken into consideration.

Rule 93
(deleted)

Rule 10
These Implementing provisions:

(1) shall enter into force on 1 July 1998, and

(2) replace the Implementing provisions as adopted on 19 May 1994 and last amended on 25 April 1995, and shall apply to
    the European qualifying examination to be held in 1999 and all subsequent years.

2
    Amended by decision of the Examination Board of 18.04.2002 which entered into force on 24.10.2002 (OJ EPO 2003, 24 ff).
3
    Amended by decision of the Examination Board of 18.04.2002 which entered into force on 24.10.2002 (OJ EPO 2003, 24 ff).




128
                                                                Article 134(8) – OJ 2006, Suppl. to OJ 12/2006, page 17




Done at Munich, 28 April 1998.
For the Examination Board
The Chairman
Michael VIVIAN


                                                                                                                     Article 134(8) – OJ 2006, Suppl. to OJ 12/2006, page 17




EUROPEAN QUALIFYING EXAMINATION
Decision of the Examination Board of 19 May 1994 adopting
Instructions concerning the qualifications required for
enrolment for the European qualifying examination1

OJ 2006, Supplement to OJ 12/2006, page 17
THE EXAMINATION BOARD,
Having regard to Article 134, paragraphs 2(c) and 8(a), of the European Patent Convention and Article 7, paragraph 4, of the
Regulation on the European qualifying examination for professional representatives (REE) of 9 December 1993
(OJ EPO 1994, 7),

Having heard the Institute of Professional Representatives,

HAS DECIDED AS FOLLOWS:

Article 1
Candidates requesting enrolment for the European qualifying examination must be able to demonstrate that they possess a
university-level scientific or technical qualification as required under Article 10, paragraph 1, REE.

Article 2
A candidate will be considered to have the necessary qualification if he or she shows that he or she possesses a master’s
degree or a bachelor’s degree with honours, a “maîtrise” or equivalent “diplôme de l’enseignement supérieur”, a
“Hochschuldiplom” or a higher or equivalent-level degree, or any degree corresponding thereto from a university, technical
university, technical high school or a similar establishment in one of the following subjects, inter alia:

Biology
Biochemistry
Chemistry
Electronics
Engineering
Pharmacology
Physics

Article 3
A candidate will be considered to possess a level of scientific or technical knowledge equivalent to a university-level
qualification as mentioned in Article 2 if he or she has

(a) a degree, diploma or certificate corresponding to, inter alia, a bachelor’s degree without honours, a diploma or degree
    from a vocational college (“Fachhochschule”), a higher technical college or institute, a school of engineering or any
    similar establishment in the fields of science or technology listed in Article 2, and



1
    See OJ EPO 1994, 599.




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Article 134(8) – OJ 2006, Suppl. to OJ 12/2006, page 17




(b) at least three years’ experience in the patent or another appropriate field in addition to the period of full-time training or
    work specified in Article 10, paragraph 2(a), REE.

Article 4
If a candidate possesses a degree, a diploma or a certificate showing a qualification corresponding to one of those specified
in Article 2 or Article 3(a) combined with another discipline not mentioned, the scientific or technical part must be of a level
equivalent to the requirements of the articles mentioned. If, in the case of a qualification from an establishment mentioned in
Article 2, the level is not equivalent, the qualification will be considered as a qualification mentioned under Article 3(a). In the
case of a qualification as mentioned in Article 3(a) or an equivalent qualification, the requirement of Article 3(b) must also be
met.

Article 5
(1) The Secretariat shall maintain lists of educational establishments in the contracting States as mentioned in Article 2 (List
     A) and Article 3(a) (List B).

(2) Should a candidate possess a degree, diploma or certificate from an educational establishment in a non-contracting
    State, he or she will have to satisfy the Secretariat that this qualification is equivalent to a qualification as mentioned in
    Article 2 or 3(a).

Article 62
If a candidate is not able to substantiate that he or she meets the conditions under Articles 2, 3 or 4, the candidate may
nevertheless be considered to possess an equivalent level of scientific or technical knowledge if he or she can establish that
he or she has at least 10 years’ experience as specified in Article 10, paragraph 2 (a), REE.

Article 7
The enrolment form shall be accompanied by a certified copy of the degree or diploma as well as any certificate verifying the
training work showing that the candidate meets the requirements of Article 10, paragraph 2, REE.

Article 8
The following are examples of courses not accepted as demonstrating a qualification meeting the requirements of Article 2
and Article 3(a): science courses where science is only a subsidiary subject, school-level courses, one-day conferences,
psychology courses, courses in politics or policy studies, inhouse courses offered to company employees, courses in
management and business administration, computer courses in data management or for business applications, vocational
training courses, radio operator licences, courses taken on a pass/fail basis, auditing courses, home study courses, courses
to develop manual, processing or manufacturing skills, courses in the history of science, engineering and technology and
courses on the use of computer software. Also not accepted are courses which repeat or which are substantially the same as
or equal to courses taken into account under Articles 2 or 3(a).

Article 9
Cases not covered by Articles 2, 3, 4 or 6 will be decided upon by the Examination Board.

Article 10
(1) The Secretariat may grant a reduction of up to one year on the periods of professional activity defined in Article 10,
     paragraph 2, REE to candidates who have successfully completed advanced specialised studies or training courses in
     the field of industrial property in any of the contracting States, or who have been examiners with the European Patent
     Office or one of the national patent offices of the contracting States.

(2)3 Candidates who have completed the eight months training with the German Patent authorities and who have been
     admitted to sit the qualifying examination for German patent agents will be granted a reduction of six months.

(3) Candidates who have completed the one-year period of study with CEIPI in Strasbourg culminating in the “Diplôme
    d’Etudes Internationales de la Propriété Industrielle” will be granted a reduction of six months.

Article 11
The first enrolments to which this decision shall apply shall be those for the European qualifying examination to be held in
1995.



2
    Amended by decision of the Examination Board of 23.09.1998 which entered into force on 01.01.1999 (OJ EPO 1999, 92).
3
    Amended by decision of the Examination Board of 23.09.1998 which entered into force on 01.01.1999 (OJ EPO 1999, 92).




130
                                                                                             Article 134(8) – OJ 2005, 393




Done at Munich, 19 May 1994.
For the Examination Board
The Chairman
Norman WALLACE


                                                                                                                                                Article 134(8) – OJ 2005, 393




EUROPEAN QUALIFYING EXAMINATION
Decision of the Examination Board of 20 January 2005

OJ 2005, 393
By decision of the Examination Board of 20 January 2005 and with effect from 1 January 2006, the distribution of marks for
paper D of the European qualifying examination is defined as follows:

40% of the marks available for paper D are awarded for part I and 60% for part II.

The time allocated to each paper does not change.




                                                                                                                      Article 134(8) – OJ 2006, Suppl. to OJ 12/2006, page 21




EUROPEAN QUALIFYING EXAMINATION
Instructions to candidates concerning the conduct of the
examination

OJ 2006, Supplement to OJ 12/2006, page 21
Having regard to Article 7(2) of the Regulation on the European qualifying examination for professional representatives (REE)
as worded in the text dated 9 December 1993 (OJ EPO 1994, 7), the Examination Board has amended its instructions
(OJ EPO 1995, 145) which entered into force on 1 February 2002, to read as follows (OJ EPO 2002, 116):

1.   Candidates who fail to comply with instructions given by the Examination Board or, on the basis thereof, by the
     invigilators, may be disqualified from the examination. The Board will take a decision on the matter as soon as possible
     after the examination. However, if candidates disturb other candidates the invigilators are empowered to suspend them
     at once from the paper during which this occurs.

2.   After they have taken their seats in the hall but before the starting bell rings, candidates may ask questions orally
     regarding the conduct of the examination. After the starting bell has rung, any questions must be asked in writing.
     Questions relating to the text of papers will normally not be answered.

3.   In the hall, each candidate will be supplied with:




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Article 134(8) – OJ 2006, Suppl. to OJ 12/2006, page 21



             1
       (a)       a single copy of the relevant papers in German, English and French, which contains in the case of Paper B an
                 additional copy of the claims with the title "Working copy (for cutting and pasting)",
       (b)       a sufficient supply of paper,
       (c)       a coloured sheet and an envelope,
       (d)       on the morning and afternoon of the second day, upon request a copy of the papers in (a) technical
                 specialisation(s) other than that (those) indicated on the enrolment application form.

4.     Candidates must bring a black pen and are advised to bring the material and documents as listed under 4.1 and
       4.2. These will not be available at the examination centre. They are free to bring any additional material or
       documents, except for the items mentioned under point 6.1. None of these materials or documents may,
       however, be inserted in the answer paper.

4.1 A yellow highlighting pen, scissors, a staple remover, paper clips, glue and transparent gummed tape;

4.2 The documents mentioned below in the versions valid as at 31 December of the year preceding the European qualifying
    examination in question:
    (a)   Convention on the Grant of European Patents (European Patent Convention)
    (b)   Implementing Regulations to the Convention on the Grant of European Patents
    (c)   Protocol on the Centralisation of the European Patent System and on its Introduction (Protocol on Centralisation)
    (d)   Protocol on Jurisdiction and the Recognition of Decisions in respect of the Right to the Grant of a European
          Patent (Protocol on Recognition)
    (e)   Rules relating to Fees
    (f)   Notice of the President of the EPO concerning the arrangements for deposit accounts
    (g)   Patent Cooperation Treaty (PCT)
    (h)   Regulations under the Patent Cooperation Treaty (PCT)
    (i)   Paris Convention for the Protection of Industrial Property
    (j)   List of the contracting States to the European Patent Convention and of the contracting States to the PCT.

5.2    Candidates are requested:

5.1 to occupy the place they have been allocated in the hall throughout the examination unless otherwise advised;
5.2 when the starting bell rings, to write their full name (legibly!) and usual signature on the separate coloured sheet;
5.3 to number the sheets of their answer paper at the top in consecutive Arabic numerals;
5.4 to write on one side of the sheet only;
5.5 to write legibly! Scripts that cannot be read cannot be marked. Candidates have to bear in mind that their answer papers
    may be marked by examiners whose mother-tongue is not the language in which the paper is written;
5.6 to write in black only and to use only yellow highlighting pens. Candidates have to bear in mind that their answer papers
    will be photocopied for marking;
5.7 (deleted)
5.8 when the closing bell rings:

       (a)   to stop writing immediately,
       (b)   to place the answer paper together with the duly filled-in coloured sheet in the envelope provided. No other
             documents must be placed in the envelope.
       (c)   to hand in the envelope promptly to an invigilator.
       (d)   Should a candidate realise, before leaving the examination room, that he has forgotten to place part of his answer
             in the envelope, he should inform the invigilator immediately. The forgotten part should be placed in a separate
             envelope signed by the candidate, indicating his name as well as the date and time when the forgotten part was
             handed in.
       The closing bell will be announced 5 minutes before it rings.

6.3 Candidates are not permitted to:
6.1 bring to the examination any electronic devices, unless express prior permission to use such device has been given by
    the Examination Secretariat;

6.1a use staplers or any other material that may disturb other candidates;


1
      Amended by decision of the Examination Board with effect from 01.01.2007 (OJ EPO 2006, 613).
2
      Amended by decision of the Examination Board with effect from 18.04.2005.
3
      Amended by decision of the Examination Board with effect from 28.12.2004.




132
                                                                    Article 134(8) – OJ 2006, Suppl. to OJ 12/2006, page 25



6.2   look at the examination paper before the starting bell rings, unless instructed to do so by an invigilator;
6.3   cheat or attempt to cheat;
6.4   communicate with each other between the starting bell and the closing bell;
6.5   write their name or initials anywhere other than on the coloured sheet;
6.6   smoke in the hall;
6.7   leave the hall without the consent of an invigilator, which may be withheld in particular if the examination is being
      conducted at more than one centre at different times.

7.    Complaints concerning the conduct of the examination will not be entertained by the Examination Board unless a written
      statement of the facts is submitted to an invigilator at the latest half an hour after the closing bell has rung on the final
      day of the examination.


                                                                                                                            Article 134(8) – OJ 2006, Suppl. to OJ 12/2006, page 25




EUROPEAN QUALIFYING EXAMINATION
Instructions to candidates for preparing their answers

OJ 2006, Supplement to OJ 12/2006, page 25
Having regard to Articles 13 and 15(1) and (2) of the Regulation on the European qualifying examination for professional
representatives (REE) as worded in the text dated 9 December 1993 (OJ EPO 1994, 7), the Examination Board hereby has
amended its instructions with effect from 30 June 2005 to read as follows:

I. General provisions

1.    Candidates are expected to be sufficiently familiar with
      •     the Guidelines for Examination in the EPO and
      •     the content of the Official Journal of the EPO
      as published up to the end of the year preceding their examination.

2.    It will be assumed that candidates have read the examination paper in the language in which they give their answer.
      Where this is not the case, candidates should indicate on the front page of their answer the language in which they read
      the paper. The same applies to candidates who, having filed a corresponding request when enrolling for the
      examination, give their answer in a language other than English, French or German.

3.    Candidates are to accept the facts given in the paper and to limit themselves to these facts. Whether and to what extent
      these facts are used is the responsibility of the candidate. Candidates are not to use any special knowledge they may
      have of the field of the invention.

II. Paper A

Time: 3½ hours, second day, morning

4.    Candidates are to assume that they have received a letter from their client which includes a description of an invention
      for which the client wishes to obtain a European patent, together with references to the most pertinent prior art known to
      him.

5.    They are expected to draft an independent claim (or claims) which offers the applicant the broadest possible protection
      and at the same time has a good chance of succeeding before the EPO. When drafting the claim(s), candidates should
      bear in mind the requirements of the Convention, including the need for novelty and inventive step, and the
      recommendations made in the Guidelines for Examination in the EPO. Dependent claims, which should be limited to a
      reasonable number, should be drafted in order to provide a fall-back position in the event of failure of the independent
      claim(s).




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Article 134(8) – OJ 2006, Suppl. to OJ 12/2006, page 25




6.    Candidates are also expected to draft an introduction, ie that part of the description which precedes the examples or the
      explanation of the drawings. The introduction should be sufficient to provide support for the claim(s). In particular,
      candidates should give consideration to the advisability of mentioning the advantages of the invention in the introduction.

7.    Candidates are expected to draft claims and an introduction for one European application only. The application should
      meet the requirements of the Convention as to unity. If in practice candidates would seek to protect further inventions by
      filing one or more separate applications, they should, in a note, clearly identify the features of the independent claim of
      such separate application(s), for example by referring to selected portions of the claims, or, alternatively, draft the claim
      itself.

8.    In addition to their answer, candidates may set out the reasons for their choice of answer in a supplementary note,
      indicating, for example, why they selected a particular form of claim, a particular feature for an independent claim or a
      particular piece of prior art as starting point, or why they rejected or preferred a particular item of prior art.

      Supplementary notes from candidates to examiners cannot, however, replace essential parts of candidates’ answers.

9.    Those sheets of the examination paper which candidates might wish to cut up and include in their answer will be printed
      on one side only. Scissors, glue and transparent gummed tape may be used, but no staplers. Sheets containing
      drawings will also be printed on one side only.

III. Paper B

Time: 4 hours, second day, afternoon

10. In this paper, candidates should assume that a European patent application has been filed designating all the
    contracting states, and that the European Patent Office has issued an official communication. The paper may include a
    client’s letter containing instructions about the way the client wishes to prosecute the European patent application.

111. Candidates are expected to respond to all points raised in the official communication. The response should be in the
     form of a letter to the EPO accompanied, where appropriate, by an amended set of claims. The description should not,
     however, be amended.

      The claims should afford the broadest possible protection while meeting the requirements of the Convention. In their
      letter of response candidates should identify clearly all amendments made in the claims and their basis in the application
      as filed and provide additional explanation, where necessary. Further they should set out their arguments in support of
      the patentability of the independent claim(s).

12. Candidates may set out the reasons for their choice of answer in a supplementary note. If candidates consider that any
    part of the application ought to be made the subject of one or more divisional applications, they should, in such a note,
    clearly set out the independent claim(s) of such divisional application(s). Such a note should also set out the arguments
    in support of the patentability of the independent claim(s) of such divisional application(s). Such a supplementary note
    from candidates to examiners cannot, however, replace essential parts of the candidate’s response to the EPO.

13.2 To assist candidates wishing to cut and paste passages from the claims into their answer, an additional copy of the
     claims of the European patent application will be provided in all official languages ("Working copy").

IV. Paper C2

Time: 6 hours, third day, morning

14. The paper will be presented in the form of a letter from a client to a professional representative accompanied by the
    European patent to be opposed and prior art documents. The annexed prior art will comprise at least three documents,
    including one in English and German only, one in English and French only, and one in German and French only.

      The paper will contain a glossary of the specialist terminology used in the documents in the three official languages of
      the EPO as well as in any official language of a contracting state requested for that particular examination under
      Article 15(3), second sentence, REE.

1
     Amended by decision of the Examination Board of 18.09.2002 which entered into force on 12.2003(OJ EPO 2005, 393).
2
     Amended by decision of the Examination Board with effect from 01.01.2007 (OJ EPO 2006, 613).




134
                                                                           Article 134(8) – OJ 2006, Suppl. to OJ 12/2006, page 25




15. Candidates are expected to put themselves in the position of the representative and, using only the information provided
    by the client, to prepare a notice of opposition which when typed would be ready for filing. The pre-printed opposition
    form provided may be used, but it is not obligatory and marks will not be lost if it is not used.

16. The notice of opposition prepared by candidates should comply with Article 100 and Rule 55 of the European Patent
    Convention (EPC), bearing in mind the relevant recommendations in the Guidelines for Examination in the EPO, Part D.
    However, in order to maintain anonymity, candidates must not give their real name, but should instead use the name of
    the representative to whom the client’s letter is addressed.

17. The notice of opposition should contain all those (and no other) grounds - where possible against all the claims - which
    candidates consider in this particular case to be prejudicial to the maintenance of the patent. The omission of a good
    ground for opposition will lead to a loss of marks commensurate with the importance of the ground in the case
    concerned. The grounds of Article 100(b) EPC will not be used.

     Candidates must also briefly set out on a separate sheet the reasons why they adopted or did not adopt the suggestions
     of the client. In addition any questions the client may have posed should be answered.

18. All claims should be treated separately taking due note of their dependencies.

19. Documents should be referred to by their annex number only, indicating the language used.

20. It is to be assumed that for all annexes which claim a priority, the disclosures of the annexes are identical with those of
    the corresponding priority documents unless there is evidence to suggest otherwise.

     If, however, any facts presented need to be confirmed, eg in the case of an alleged prior public disclosure, candidates
     would be expected to state that such confirmation would be filed later.

     Regardless of the date of the client’s letter, candidates are to assume there is no possibility to confer with him.

21. Candidates should be aware that Annex 1 is fictitious and is not necessarily in a form that would have led to a patent
    granted by the European Patent Office.

V. Paper D

Time: Part I - 3 hours, first day, morning; Part II - 4 hours, first day, afternoon3

22. Paper D Part I comprises questions relating to different areas of the candidates’ legal knowledge. Candidates must
    answer all the questions. Answers should be brief and to the point. For all questions candidates must cite any articles,
    rules or other legal basis relevant to their answer.

23.4 Paper D Part II comprises an enquiry from a client requiring an answer in the form of a legal opinion.

     In their opinion candidates must explain the legal consequences of the situation as described.

     Candidates will be expected to demonstrate their ability to deal with a complex industrial property law situation involving
     fundamental issues of patentability, rights of inventors, inventions as property and third party rights, as defined in
     particular, but not solely, in Articles 52 to 89 EPC, corresponding articles of the PCT, the Agreement relating to
     Community Patents and the Paris Convention, as well as in the relevant laws of the contracting states.

24. One grade will be given for Paper D, based on the marks awarded for Parts I and II.




3
    Amended by decision of the Examination Board with effect from 01.03.1999.
4
    Amended by decision of the Examination Board with effect from 01.01.2007 (OJ EPO 2006, 613).




                                                                                                                              135
Article 134(8) – OJ 2006, Suppl. to OJ 12/2006, page 31



                                                                                                                         Article 134(8) – OJ 2006, Suppl. to OJ 12/2006, page 31




EUROPEAN QUALIFYING EXAMINATION
Instructions to invigilators1

OJ 2006, Supplement to OJ 12/2006, page 31
Having regard to Article 9(4) of the Regulation on the European qualifying examination for professional representatives (REE)
as worded in the text dated 9 December 1993 (OJ EPO 1994, 7), the Examination Secretariat has amended its instructions
(OJ EPO 1995, 153 and OJ EPO 2001, 120) which entered into force on 1 February 2002, to read as follows (OJ EPO 2002,
116 - 117):

1. Appointment of invigilators
The Examination Secretariat appoints for each examination and each centre an invigilator in charge of conducting the
examination at the centre in question. These invigilators should be appointed from among the members of the Examination
Board or an examination committee. The Secretariat can nominate other invigilators to assist with the invigilation. These other
invigilators may be changed during the examination.

2. Duties of invigilators
Invigilators must ensure that the European qualifying examination is conducted at the centre in question in accordance with
the REE, the present instructions and the following instructions to candidates:

(a) Instructions concerning the conduct of the examination (OJ EPO 1995, 145);

(b) Instructions to candidates for preparing their answers (OJ EPO 1998, 119).

3. Examination Secretariat
The invigilator in charge should address any questions to the Examination Secretariat in Munich (Tel. (+49-89) 2399-5155,
Fax (+49-89) 2399-5140).

4. Transmission of examination documents
(a) If the examination papers have not yet arrived at the centre on the eighth day before the examination is due to begin, the
     invigilator in charge shall inform the Examination Secretariat accordingly by telephone, telex or telefax on the seventh
     day before the examination is due to begin.

(b) The examination centre shall make three copies of the candidates’ answers.

(c)    One copy of the candidates’ answers shall be kept at the examination centre until the Secretariat informs the invigilator
       in charge that all the originals have arrived.

(d) The originals of the candidates’ answers and two copies shall be sent to the Secretariat using the mode of transmission
    which is safest and one which is as rapid as possible, preferably by messenger.

(e) The invigilator in charge should decide, by agreement with the Secretariat, whether and how surplus examination papers
    are to be sent to the Secretariat.

5. Errors in examination papers
(a) If it has been agreed with the Examination Secretariat that an error discovered in an examination paper before the
     examination begins should be drawn to the attention of candidates, this must be done after the examination papers have
     been distributed.

(b) In the event of an error being discovered in an examination paper after the starting bell has rung, it shall normally not be
    drawn to the candidates’ attention (last sentence in point 2 of the instructions referred to in point 2(a) above). If the
    invigilator in charge considers the error to be a serious one, however, the Secretariat shall be informed by telephone.
    Attention shall be drawn to the error only after the Secretariat has informed the invigilator in charge that it has secured
    the agreement of five members of the Examination Board. The Secretariat shall also establish whether extra time is to
    be allowed for drawing attention to the error and, if so, how much.

1
      See OJ EPO 1995, 153.




136
                                                                   Article 134(8) – OJ 2006, Suppl. to OJ 12/2006, page 31



6. Conduct of the examination
(a) The invigilator in charge shall remind the candidates of points 2 and 5-7 of the instructions referred to in point 2(a) above
     before the starting bell rings. The following applies to point 6.7:

       •      the invigilator in charge should ensure that no candidate talks to anyone inside or outside the hall between the
              starting and closing bells. This also applies to telephone conversations. However, candidates may at any time
              leave the hall for the remainder of the paper provided they have handed in the question paper and their answer
              paper (in the last half hour of the paper they need not hand in the question paper);

(b) Candidates who arrive after the starting bell has rung may not make up the lost time after the closing bell has rung
    unless, in exceptional cases, the invigilator in charge decides otherwise.

(c)    Candidates are not permitted to take any copies of their answers from the hall.

(d) The examination shall not be interrupted to enable beverages to be served. Candidates who eat food they have brought
    with them must not disturb the other candidates by doing so.

7. Complaints
The invigilator in charge shall see to it that the candidates can submit complaints in the examination hall for half an hour after
the closing bell has rung on the last day of the examination (point 7 of the instructions referred to in point 2(a) above).

8. Report2
The invigilator in charge shall draw up and sign a report containing, in particular:

-      the names of the candidates present

-      the times of the starting and closing bells

-      any complaints or anything out of the ordinary occurring between the starting and closing bells and

-      all relevant information relating to answer papers handed in late.

Moreover the invigilator shall collect all evidence available to establish any cheat or attempt to cheat arisen during the
examination.

9. Entry into force
These instructions shall enter into force on 1 February 2001.




2
      See OJ EPO 2001, 120.




                                                                                                                             137
Article 134(8) – OJ 2006, 475



                                                                                                                              Article 134(8) – OJ 2006, 475




EUROPEAN QUALIFYING EXAMINATION
Notice regarding the European qualifying examination 2008

OJ 2006, 475
1. The European Patent Convention 2000 (EPC 2000) has been ratified by a sufficient number of states to bring it into force
on 13 December 2007 at the latest. The question has been raised whether the changes brought about by the introduction of
EPC 2000 will be subject of the European qualifying examination in 2008. As the decision on this topic rests solely with the
Examination Board, the latter considered very carefully the question after having taken fully into account representations
made to it by the various interested circles. The Examination Board has decided that the European qualifying examination
2008 will be based on the law and practice that exist on 31 December 2007. The purpose of this notice is to inform the public
of its decision, which is based on the following considerations.

2. The EPC 2000 and a first set of Implementing Regulations to the European Patent Convention have been known for a
number of years now. The Examination Board is well aware that several amendments to this first set of Implementing
Regulations have not yet been made public nor is it likely that they will be adopted by the Administrative Council until the end
of this year. However, the final set of Implementing Regulations will be available for inclusion in courses in 2007, so that there
should be time to provide the necessary instruction prior to the 2008 examination.

Also, in taking its decision the Examination Board has very much borne in mind the overriding necessity to ensure that
successful candidates are qualified as being fit to practice as a professional representative before the European Patent Office
and in this sense it should not be forgotten that, as from 13 December 2007, all professional representatives will have to be
familiar with the provisions of EPC 2000 in order properly to advise and represent their clients.

Due to the fact that board of appeal case law relating to the new procedures under the EPC 2000, if any, will be very limited,
and that many provisions remain unamended in substance, the Examination Board believes that the additional burden for
candidates remains within reasonable limits.

3. Thus, when preparing for the 2008 examination, candidates should familiarise themselves with the provisions of EPC 2000,
the accompanying Implementing Regulations and the Transitional Provisions.

4. For the sake of completeness, it is hereby confirmed that the examination in 2007 will be based entirely on the provisions of
the EPC in force at the end of 2006, so that no questions relating to EPC 2000 will be included.




138
                                                                                                      Article 142 – OJ 1991, 623



                                                                                                                                Article 142 – OJ 1991, 623




Notice from the European Patent Office
dated 11 November 1991 concerning the designation of
Contracting States in European patent applications in
connection with the “subsequent choice of a Community
patent” option (Article 82 CPC)

OJ 1991, 623
1.    The Agreement relating to Community patents (ACP)1 was signed on 15 December 1989 by all twelve Member
      States of the European Communities2, but has not yet entered into force. The principal component of the ACP is the
      Community Patent Convention (CPC).

2.    Under certain circumstances, a Community patent may be obtained subsequently for European patent applications
      filed before the ACP entered into force. One of the main requirements is that all the Contracting States to the ACP must
      have been designated in the European patent application.

3.    Article 82 CPC stipulates the following requirements for the subsequent choice of a Community patent:

      -       the ACP must have entered into force

      -       all the Contracting States to the ACP must have been designated in the European patent application filed before
              the ACP entered into force

      -       the time limit for payment of the fees for grant and printing (Article 97(2)(b) and Rule 51(6) EPC) must not have
              expired

      -       the applicant must, before expiry of that time limit, have filed with the European Patent Office a written statement
              that he wishes to obtain a Community patent.

4.    To enter into force, the ACP must be ratified by all twelve signatory States (Article 10 ACP). However, an
      intergovernmental conference of the Member States of the European Communities can decide unanimously that the
      ACP should initially enter into force for fewer than all twelve signatory States3. The likelihood is that this will happen and
      that for Ireland at any rate - the only EC Member State which has not yet become party to the EPC - the ACP will not
      enter into force in the foreseeable future.

5.    Assuming that the ACP takes effect for the other eleven (or fewer) EC Member States which are also Contracting States
      to the EPC, a Community patent could be obtained subsequently for European patent applications filed on or after 1
      January 1992 provided they designate all the eleven potential ACP Contracting States, i.e. including Portugal4.

6.    Applicants wishing to keep open the option of subsequently choosing a Community patent must therefore designate all
      eleven EC/EPC Member States (BE, DE, DK, ES, FR, GB, GR, IT, LU, NL, PT) in their European patent applications5
      filed on or after 1 January 1992.
      No prediction can be made at present, however, as to when and for which States the ACP will enter into force.




1
     Official Journal of the European Communities of 30 December 1989, L 401.
2
     Cf. OJ EPO 1990, 224.
3
     Cf. OJ EPO 1990, 224 (228 et seq.).
4
     The EPC is due to take effect for Portugal on 1 January 1992 (see OJ EPO 1991, 549).
5
     The same will apply to Euro-PCT applications once the PCT has entered into force for Portugal.




                                                                                                                               139
Article 149 – OJ 1980, 407



                                                                                                                                                     Article 149 – OJ 1980, 407




Treaty between the Swiss Confederation and the Principality of
Liechtenstein on Patent Protection (Patent Treaty) of
22 December 19781

OJ 1980, 407
Chapter 1: General Provisions

Article 1
Unified Territory of Protection
Switzerland and the Principality of Liechtenstein shall form a unified territory of protection for the purposes of patent law.

Article 2
European Patents
A European patent may only be obtained for Switzerland and the Principality of Liechtenstein by joint designation under
Article 149 of the European Patent Convention. Designation of one of the Contracting States shall be deemed to constitute
designation of both of them.

Article 3
International Patent Applications
(1) In an international application, Switzerland and the Principality of Liechtenstein may only be designated jointly under
Article 4 of the Patent Cooperation Treaty. Designation of one of the Contracting States shall be deemed to constitute
designation of both of them.

(2) The same shall apply mutatis mutandis for the election of Switzerland and the Principality of Liechtenstein under
Article 31 of the Patent Cooperation Treaty, provided that Chapter II of that Treaty is applicable to both Contracting States.

Article 4
Legal Effect of Patents
(1) The patents valid for the unified territory of protection shall be unified patents. They shall have the same effect in both
Contracting States and may only be granted, transferred, annulled or lapse in respect of the whole territory of protection.

(2) The unified nature of the patents shall also apply in cases where patents have been expropriated on the basis of the
patent legislation; the expropriated person shall nevertheless be entitled to a free and exclusive licence for the territory of the
Principality of Liechtenstein.

Article 5
Applicable Law
(1) In the unified territory of protection,
     (a)   the current Federal legislation on patents (patent legislation), and
     (b)   other provisions of Federal legislation as required by the application of the patent legislation, shall apply.

(2) National territory for the purposes of the patent legislation shall mean the unified territory of protection, subject to
Article 8 of this Treaty.

(3) The law application in accordance with paragraph (1) shall be set out in the Annex to this Treaty2. Additions and
amendments to the Annex shall be communicated by the Swiss Federal Council to the Government of the Principality of
Liechtenstein and the latter shall have them published. Where the Government of the Principality of Liechtenstein is opposed
to the inclusion of a Swiss statute in the Annex, Article 16 shall be applicable.




1
    Translation by the International Bureau of WIPO. See also the information “Liechtenstein ratifies the European Patent Convention and the PCT”,
    (OJ 2/1980, p. 36 et seq).
2
    Note: The Annex is not reproduced here.




140
                                                                                                     Article 149 – OJ 1980, 407



Article 6
Treaties and Conventions
(1) For the duration of this Treaty, the Principality of Liechtenstein, just as Switzerland, shall be a party to the Paris
Convention for the Protection of Industrial Property, the European Patent Convention, the Patent Cooperation Treaty and,
where required in application of this, Treaty, other conventions.

(2) Switzerland shall conclude bilateral treaties concerning patents with third party States, which affect the application of this
Treaty, only with effect for the unified territory of protection. It shall endeavour to obtain that the effect of treaties concluded
before the entry into force of this Treaty shall be extended to the Principality of Liechtenstein.

(3) The Principality of Liechtenstein shall authorize Switzerland to represent it for the duration of this Treaty in negotiations
with third-party States concerning the conclusion or amendment of bilateral treaties concerning patents and to conclude such
treaties with effect for the Principality.

(4) The Principality of Liechtenstein shall refrain for the duration of this Treaty from independently concluding bilateral
treaties concerning patents with third-party States.

Chapter 2: Administrative Tasks

Article 7
Competent Office
(1) The Federal Bureau of Intellectual Property shall be competent to carry out with effect for the unified territory of
protection the administrative tasks deriving from the patent legislation.

(2) The Bureau shall be a receiving Office within the meaning of Article 2 and Rule 19 of the Patent Cooperation Treaty for
international applications filed by persons who are Liechtenstein nationals or have their headquarters or domicile in the
Principality of Liechtenstein.

Article 8
Representation
Natural persons or legal entities having their domicile or headquarters in the Principality of Liechtenstein may be appointed
representatives in proceedings before the Federal Bureau of Intellectual Property, to the extent that they are entitled to act as
professional representatives in patent proceedings under Liechtenstein law.

Article 9
Reference to the Territorial Scope of Protection
The Federal Bureau of Intellectual Property3 shall suitably draw attention, on publications issued after the entry into force of
this Treaty, to the fact that patents have effect for the unified territory of protection.

Chapter 3: Legal Protection

Article 10
Liechtenstein Authorities
(1) The Principality of Liechtenstein shall designate the judicial authorities that, in patent proceedings
     (a)   decide as sole instance in civil actions,
     (b)   order provisional measures.

(2) Offences against the patent legislation shall be prosecuted and judged in first and second instance by the courts of the
Principality of Liechtenstein.

(3) The Liechtenstein authorities competent for prosecution, for judging civil and criminal matters and for executing civil and
criminal judgments in patent proceedings shall have the same rights and obligations as the corresponding Swiss authorities.

Article 11
Legal Remedies
Civil and criminal judgments issued in patent proceedings by courts of the Principality of Liechtenstein may, in conformity with
the procedural provisions applicable under this Treaty, be the subject of an appeal to the Federal Court.




3
    Now: Federal Office of Intellectual Property.




                                                                                                                               141
Article 149 – OJ 1980, 407



Article 12
Legal Assistance
The Swiss and Liechtenstein authorities competent for prosecution, for judging civil and criminal matters and for executing
civil and criminal judgments in patents proceedings shall be entitled and obligated to the same mutual legal assistance as
between the Confederation and the cantons and as the cantons among themselves; the legislation of the Contracting States
as regards extradition shall be reserved.

Article 13
Execution and Grace
(1) The competence and procedure for executing court decisions that are executable throughout the whole of the territory of
protection shall be subject to the law of the State in which execution is applied for.

(2) The right of grace shall belong to the State in which judgment was given.

Article 14
Relations Between Authorities
The judicial and administrative authorities of the Contracting States may deal directly with one another.

Chapter 4: Legal Matters and Disputes

Article 15
Joint Committee
(1) To facilitate the implementation of this Treaty, a Joint Committee shall be set up, composed of representatives of the
Contracting States.

(2) The task of the Joint Committee shall be, in particular:

      (a)   exchange of information and consideration of patent matters;
      (b)   consideration of matters connected with the interpretation or application of this Treaty.

(3) The Joint Committee shall meet at the request of either of the Contracting States.

Article 16
Settlement of Disputes
(1) All disputes arising from the interpretation or application of this Treaty shall be submitted, at the request of either of the
Contracting States, to the Joint Committee whose task it shall be to seek a solution to the dispute.

(2) Where it is not possible to settle a dispute, either of the Contracting States shall be entitled to submit it to a committee
composed of one representative of each of the Contracting States. These representatives may not have participated in the
discussions of the Joint Committee.

(3) Where one State has not designated its representative and has not responded to the invitation of the other State to make
such designation within two months, that representative shall be appointed, at the request of the latter State, by the President
of the European Court of Human Rights.

(4) Should the two representatives not achieve a settlement within three months of the dispute having been submitted to
them, they shall designate by common accord a member from among the nationals of a third-party State. Failing agreement
on the choice of such member within a period of two months, either Contracting State may request the President of the
European Court of Human Rights to appoint the third member of the committee; the latter shall then assume the functions of
an arbitration tribunal.

(5) Where the President of the European Court of Human Rights is impeded in the cases referred to in paragraphs (3) and
(4) or is a national of one of the Contracting States, the appointment of the representative or of the third member shall lie with
the Vice-President of the Court or with the most senior member of the Court who is neither impeded nor a national of one of
the Contracting States.

(6) Unless otherwise provided for by the Contracting States, the arbitration tribunal shall itself decide on its procedure. The
arbitration tribunal shall take its decisions on a majority of the votes of its members; its decisions shall be final and binding.

(7) Each State shall bear the cost arising from the activity of the member of the court it has appointed. The costs of the third
member of the committee shall be borne in equal parts by the Contracting States.



142
                                                                                                   Article 149 – OJ 1980, 407



Chapter 5: Transitional and Final Provisions

Article 17
Patents Already Granted
This Treaty shall also apply to patents granted with effect for Switzerland prior to its entry into force.

Article 18
Implementation of the Treaty
(1) The Government of the Contracting States shall conclude an implementing agreement.

(2) Where necessary, the Contracting States shall issue implementing rules.

Article 19
Ratification and Entry into Force
(1) This Treaty shall require ratification. The instruments of ratification shall be exchanged in Berne as soon as possible.
                                                                                                                                  4
(2) The Treaty shall enter into force on the first day of the third month following exchange of the instrument of ratification.

Article 20
Duration and Denunciation
(1) This Treaty shall be concluded for an unlimited period of time.

(2) It may be denounced at any time by either of the Contracting States. It shall nevertheless remain in force for one year
after denunciation.

Article 21
Maintenance of Acquired Rights
(1) The expiry of this contract shall not affect rights acquired hereunder.

(2) The Government of the Contracting States shall take by common accord the necessary measures to ensure that persons
entitled may continue to claim their rights in court for the remainder of the period of protection.

Implementing Agreement to the Treaty between Switzerland and Liechtenstein in Respect of Patents of
10 December 1979

Article 1
Notice of Territorial Scope of Protection
(1) Pursuant to Article 9 of the Treaty, the territorial scope of protection shall be notified in the Swiss Patents, Designs and
Trademarks Journal, in the yearly catalogue and on published patent specifications and applications.

(2) The Federal Office of Intellectual Property and the Liechtenstein Office of Intellectual Property shall determine by
common accord those forms used in the patent granting procedure which shall also bear such notice.

Article 2
Liechtenstein Representatives
(1) The Office of the National Economy of the Principality of Liechtenstein shall keep a list of the natural persons and legal
entities authorized under Article 8 of the Treaty to act as professional representatives in respect of patents.

(2) That Office shall communicate to the Federal Office of Intellectual Property the entries made in the list and the
subsequent amendments to such entries together with, in the case of legal entities, the names of the natural persons holding
the authorization provided in paragraph (1).

Article 3
Provision of Printed Matter
(1) The Federal Office of Intellectual Property shall provide free of charge to the Liechtenstein Office of Intellectual Property
the following publications.
     (a)    a complete edition of the Swiss Patents, Designs and Trademarks Journal (Parts I to V);
     (b)    an additional copy of the general part (Part I) of the Swiss Patents, Designs and Trademarks Journal;
     (c)    the yearly catalogue.


4
    Note: The Treaty entered into force on 1 April 1980.




                                                                                                                            143
Article 149 – OJ 1980, 407




(2) On request, the judicial and administrative authorities of Liechtenstein shall receive free of charge from the Federal
Office of Intellectual Property individual copies of patent specifications and applications.

(3) If a public collection of patent specifications, arranged according to the International Patent Classification, is established
in the Principality of Liechtenstein, the Federal Office of Intellectual Property shall provide free of charge, at the request of the
Liechtenstein authorities, the necessary patent documents it has published.

(4) The Liechtenstein Office of Intellectual Property shall receive free of charge the forms and information sheets required by
applicants.

Article 4
Administrative Execution
The Federal Office of Intellectual Property and the Liechtenstein Office of Intellectual Property shall be empowered to settle
by common accord questions arising from the administrative execution of the Treaty and of this Implementing Agreement.

Article 5
Final Provision
(1) This Agreement shall enter into force at the same time as the Patent Treaty of December 22, 1978, and shall remain
applicable for as long as that Treaty remains in force.

(2) It may be amended at any time by common accord.




144
                                                                                                                         Article 150 – OJ 1997, 592



                                                                                                                                                                Article 150
                                                                                                                                                Article 150 – OJ 1997, 592




PCT
Amendment of PCT Regulations

OJ 1997, 592
At its meeting of 16 September to 1 October 1997, the PCT Assembly approved a large number of amendments to the PCT
Regulations. Most of the changes will enter into force on 1 July 1998. A full report will appear in a later edition of the OJ.

The Assembly also decided on various fee reductions and changes to the PCT Gazette. These will come into effect on
1 January 1998.

1. Reduction of PCT fees

For international applications filed after 1 January 1998, the basic fee is reduced by around 15% and the designation fee by
approximately 19%1. The amounts payable in the currencies approved by the EPO as PCT Receiving Office are indicated in
the Guidance for the payment of fees, costs and prices.

2. PCT Gazette

As of 1 January 1998, with the entry into force of the amendments to Rule 86 PCT, the PCT Gazette will be published in
electronic form as well as on paper2.

The paper version will be published bilingually instead of in separate English-language and French-language editions. It will
contain only the bibliographic data from the front page of the pamphlet published in accordance with Rule 48 PCT and, as in
the past, the information required by Rule 86.1(ii)- (v) PCT.

The electronic version will contain, in addition, the abstract and the drawing from the front page. It will be accessible
simultaneously in English and French3. Details will be given in the Administrative Instructions.




1
    See PCT Newsletter No. 10/1997, 1.
2
    For technical reasons, a few editions may still appear in the previous form after the date when the changes take effect.
3
    Access will be possible via, for example, the Internet or CD-ROM.




                                                                                                                                               145
Article 150 – OJ 1998, 332



                                                                                                                               Article 150 – OJ 1998, 332




PCT
Amendments to the PCT Regulations which will enter into
force on or after 1 July 1998

OJ 1998, 332
Those amendments adopted at the 24th PCT Assembly from 16 September to 1 October 1997 which entered into force on 1
January 1998 (reduction in PCT fees, new PCT Gazette) have already been reported on in a previous issue of the Official
Journal1. The most important aspects of the other amendments to the PCT Regulations adopted at the 24th Assembly, which
will enter into force on or after 1 July 1998, are described below.

1. Language of the International Application - Rules 12.1 and 12.2

The existing regulations concerning the language of filing are being expanded. As of 1 July 1998, international applications
may be filed in any language which the receiving Office accepts for that purpose. However, the receiving Office must
continue to accept at least one language which is both accepted by the competent International Searching Authority and a
PCT language of publication. Applicants will thus continue to be able to file international applications in a language which
does not require translation later on in the international phase (see 2.).

At the time of going to press, Denmark was the only EPC contracting state to have made any announcement concerning this
amendment, stating that it would be accepting Swedish and Finnish as additional languages of filing. The EPO itself will
continue to use its PCT languages of filing (English, French and German).

The request itself (Form PCT/RO/101) must still be filed in a language which is both accepted by the receiving Office and a
language of publication.

2. Translation for the Purposes of International Search - Rule 12.3

Applicants must file a translation within one month of the date of receipt of the international application if the language in
which the application is filed is not accepted by the International Searching Authority that is to carry out the international
search.

Details about the language of filing, the language of changes to the international application and the translation requirements
are contained in the new version of Rule 12 PCT. The following have also been amended as a result: Rules 11.14, 19.4, 20.4,
23.1, 26.3-26.3ter, 29.1, 47.3, 48.3 and 55.2.

3. Priority Claim and Priority Document - Rules 4.10, 17 and 26bis

As of 1 July 1998 the requirements pertaining to priority claims and the correction thereof will be less stringent. Applicants will
be able to correct or add priority claims by means of a notice submitted to the receiving Office or the International Bureau
within a time limit of 16 months from the earliest priority date or, where the correction or addition would cause a change in the
priority date, 16 months from the priority date as so changed, whichever 16-month period expires first. Such a notice may be
submitted until the expiration of four months from the international filing date. The correction of a priority claim may include
the addition of any indication referred to in Rule 4.10. Where the correction or addition of a priority claim causes a change in
the priority date, any time limit which is computed from the previously applicable priority date and which has not already
expired will be computed from the priority date as so changed. For more details, see revised Rule 4.10 and new Rule 26bis.

Rules 17.1 and 17.2 (The Priority Document) have also been changed. Rule 17.1(a) now also applies to priority documents
which are based on an international application. Where the priority of an earlier national or international application is claimed
under Article 8, a copy of that earlier application, certified by the authority with which it was filed (“the priority document”),
must, unless the priority document has already been filed with the receiving Office together with the international application
in which the priority claim is made, be submitted by the applicant to the International Bureau or to the receiving Office not later
than 16 months after the priority date. A priority document which is received by the International Bureau after the expiration of


1
    OJ EPO 1997, 592.




146
                                                                                                     Article 150 – OJ 1998, 332




that time limit will be considered to have been received on the last day of that time limit if it reaches the Bureau before the
date of international publication of the international application.

Where the priority document is issued by the receiving Office, the applicant may, instead of filing the priority document,
request the receiving Office in accordance with Rule 17.1(b) to prepare the priority document and transmit it to the
International Bureau. Such a request must be made not later than 16 months after the priority date and may be subjected by
the receiving Office to the payment of a fee.

According to Rule 17.2(a), a designated Office may no longer demand the filing of a copy of the priority document together
with a certified translation thereof.

4. Fees - Rules 15, 16, 16bis, 57, 58 and 58bis

PCT fees were reduced with effect from 1 January 19981. A further change, which will enter into force on 1 July 1998, relates
to the time limits for payment, which have been brought further into line for the various fees to be paid during the international
phase. Also, the method of fixing the equivalent amounts of certain fees not paid in Swiss Francs has been rationalised.
Further changes clarify the amounts to be paid where a fee is changed before payment is effected. The provisions governing
cases where a refund is possible have also been changed.

Finally, the procedure for late payment of fees according to Chapter II has been adapted to the system used in Chapter I.
This includes the option to introduce a fee for late payment of the handling fee or the international preliminary examination
fee. In its capacity as International Preliminary Examining Authority, the European Patent Office has availed itself of this
option2.

5. Demand for international preliminary examination - Rule 59

The procedure for submitting a demand for international preliminary examination to an authority which is not competent
will, as of 1 July 1998, be in line with the provisions which apply to the filing of an application with a receiving Office which is
not competent. This will afford applicants extra protection against loss of rights.

6. Time Limit for International Preliminary Examination - Rule 69.2

As a result of procedural changes, as of 1 July 1998 the time limit for establishing the international preliminary examination
report will be 28 months from the priority date, or 8 months from the date of payment of the fees referred to in Rules 57.1 and
58.1(a), or 8 months from the date of receipt by the International Preliminary Examining Authority of the translation furnished
under Rule 55.2, whichever expires last.

7. Access to Files - Rule 94

In future, it will be easier for third parties to gain access to files in respect of international applications filed on or after 1
July 1998. In particular, elected Offices will be able to allow third parties access to documents from the file of the international
preliminary examination to the same extent as provided by their national law, subject to reimbursement of the cost. The EPO
will publish the relevant provisions separately.

8. Inventions Relating to Biological Material - Rule 13bis

As of 1 July 1998, Rule 13bis will apply not only to deposited micro-organisms, but also, in view of rapid developments in the
field of biotechnology, to the deposit of other biological material, as does Rule 28 EPC3.




2
    See OJ EPO 1998, 282.
3
    See OJ EPO 1996, 390.




                                                                                                                               147
Article 150 – OJ 1993, 764



                                                                                ter
9. Nucleotide and/or Amino Acid Sequence Listings - Rule 13

The disclosure of nucleotide and/or amino acid sequence listings is the subject of a new WIPO standard (PCT Administrative
Instructions, Annex C) which comes into force on 1 July 1998 and which is reflected in particular in the amendments to
Rules 5.2 and 13ter. In future applicants will have to draw up only one sequence listing for the receiving Office, the
International Searching and Preliminary Examining Authorities and the designated and elected Offices, and they will not be
required to submit either translations or other extra copies if the new standard is followed. It may however be necessary to file
an extra copy of the sequence listing on request with the competent authority (eg where the International Searching Authority
and Preliminary Examining Authority are not the same).

The new standard and further details will be published separately in a supplement to the Official Journal (see also WIPO
publications on changes to the PCT Administrative Instructions and Annex C thereto in the PCT Gazette, the PCT Newsletter
and on the Internet).

10. Electronic filing, processing and transmission of international applications - Rules 89bis and 89ter

Two rules (Rules 89bis and 89ter) have been added to Part F of the Regulations (Rules Concerning Several Chapters of the
Treaty). They provide the legal basis for the creation of new PCT Administrative Instructions relating to further details on
electronic filing, processing and transmission, including corresponding WIPO standards. The new rules, together with the
associated Administrative Instructions, will enter into force at a later date (see also, when the time comes, WIPO publications
in the PCT Gazette, PCT Newsletter and on the Internet).

11. Text of the amended rules

The text of the amended rules is contained in the report on the 24th PCT Assembly published by WIPO on the Internet. They
can also be found in a special edition of the PCT Gazette. WIPO intends to publish a new edition of the consolidated text of
the PCT (Treaty and Regulations) in the near future.


                                                                                                                             Article 150 – OJ 1993, 764




PCT
The International Bureau of WIPO as alternative receiving
Office under the
PCT - changes to PCT regulations

OJ 1993, 764
As of 1 January 1994, applicants from all PCT Contracting States will have the option of filing international applications
with the International Bureau as receiving Office. In order to afford the International Bureau the requisite legal
competence under Article 10 PCT to act as receiving Office and to make practical provisions for its new role, a number of
changes to the PCT regulations will take effect on 1 January 1994. These changes are described below1.

1. Competence of the International Bureau as receiving Office
- Rules 19.1 and 19.2 PCT
Rule 19.1(a)(iii) includes the International Bureau as an alternative receiving Office for any resident/national of a PCT
Contracting State.
Rule 19.2(ii) provides that where there are two or more applicants the International Bureau may act as receiving Office
provided at least one of the applicants is a resident/national of a PCT Contracting State.



1
    The text of the amended rules has been published in the PCT Gazette No. 26/1993 of 28.10.1993.




148
                                                                                                     Article 150 – OJ 1993, 764



2. Competence of International Bureau where an international application is filed with a non-competent receiving
Office - Rule 19.4 PCT
Rule 19.4 provides that where an international application is filed at a receiving Office which, due to the applicant’s
residence/nationality, is not competent to receive it, that receiving Office shall, subject to any provisions concerning national
security (not applicable to the EPO) transmit the international application to the International Bureau. Provided the
requirements of Article 11(1) PCT (as to the language requirement for filing with the International Bureau, see paragraph 6
below) are met, the date of receipt by the non-competent receiving Office, which in this context is considered to be acting on
behalf of the International Bureau, will be accorded as the international filing date. The non-competent receiving Office is
entitled to charge a special transmittal fee2.

3. Competent ISA where an international application is filed with the International Bureau as receiving Office -
Rule 35.3 PCT
The competent ISA is that ISA which would have been competent had the international application been filed at the receiving
Office which is the national Office of, or acting for, a Contracting State of which the applicant is a resident/national. Where
more than one ISA would be competent, the choice is left to the applicant and must be indicated in the PCT request form
(Rules 4.1(b)(vi) and 4.14bis PCT).

The new provisions broaden in some cases the applicant’s choice of competent ISA. For example, an international application
filed with the International Bureau by a US national and a French national would allow them to choose between the USPTO
and the EPO, a choice not open to them under the previous provisions if they had filed the international application at the
EPO or French Industrial Property Office. A sole applicant having US nationality but resident in France would have the same
choice.

4. Competent IPEA where an international application is filed with the International Bureau - Rule 59.1(b) PCT
As is the case for the ISA, the competent IPEA is that IPEA which would have been competent had the international
application been filed at the receiving Office which is the national Office of, or acting for, a Contracting State of which the
applicant is a resident/national.

5. Representation - Rule 83.1bis , 90.1(a) and (d(i) PCT
Rule 83.1bis(a) extends the right to practise before the International Bureau as receiving Office to any agent who would have
been entitled to represent the applicant had the international application been filed at the national Office of, or acting for, the
Contracting State of which the applicant is a resident or national (or, if there are two or more applicants, any of the
applicants).

Rule 83.1bis(b) parallels Article 49 PCT. It extends the right to practise before the ISA and IPEA to any person having the right
to practise before the International Bureau as receiving Office.
Consequential amendments have been made to Rule 90.1(a) and (d)(i).

6. Admitted languages for international applications filed with the International Bureau as receiving Office
All of the publication languages under the PCT, i.e. Chinese, English, French, German, Japanese, Russian and Spanish are
admitted languages for the purpose of filing an international application with the International Bureau. In any particular case
the language of filing will be determined by the applicant’s choice of ISA; the international application must be in a language
for which the ISA has agreed to perform the international search (Rule 12.1 PCT).

It should be noted that international applications which are in a language other than one of the PCT publication languages but
for which the ISA has agreed to perform the international search, may only be filed with the receiving Office which has
declared itself willing to accept such international applications, not with the International Bureau. For example, international
applications in the Dutch language for which the EPO is the competent ISA may only be filed with the Netherlands Patent
Office or, where appropriate, the Belgian Industrial Property Office.




2
    The EPO does not propose to charge this fee.




                                                                                                                              149
Article 150 – OJ 1999, 329



                                                                                                                              Article 150 – OJ 1999, 329




Access to PCT files

OJ 1999, 329
1. Revised Rule 94 PCT liberalises the conditions under which third parties may have access to documents contained in the
file relating to any international application filed on or after 1 July 1998.

Rule 94.1(b) PCT provides that documents held in the files of the International Bureau of WIPO will be available to third
parties, subject to Article 38 PCT, as of the international publication date.

Rule 94.2 PCT provides that once the International Preliminary Examination Report has been established, the International
Preliminary Examining Authority is obliged, upon the request of any elected office and subject to reimbursement of any
expense incurred, to furnish copies of any document in its file.

Rule 94.3 PCT provides that any elected office may, after international publication, allow access by third parties to any
documents regarding an international application, including international preliminary examination, contained in its files to the
same extent as provided for by national law for access to the file of a national application.

2. So far as the EPO is concerned, this means that following completion of the International Preliminary Examination Report,
third party access will be allowed to all documents pertaining to the international preliminary examination, though not
documents clearly intended for internal use only, provided the applicant has signalled his intention to enter the European
phase before the EPO as elected office by performing at least one of the acts listed in Rule 104(b)(1) EPC.

It should be noted, however, that the EPO does not intend to request copies of documents on behalf of applicants from an
International Preliminary Examining Authority other than itself under Rule 94.2 PCT unless the EPO itself requires these
documents in connection with processing of the international application before it as elected office.


                                                                                                                              Article 150 – OJ 2003, 382




Access to PCT files

OJ 2003, 382
1. Rule 94.3 PCT entitles any elected office, after international publication, to allow access by third parties to any documents
regarding an international application, including international preliminary examination, contained in its files to the same extent
as provided for by national law for access to the file of a national application.

2. The EPO currently allows third parties access after completion of the International Preliminary Examination Report to all
documents pertaining to the international preliminary examination, though not to documents clearly intended for internal use,
on condition that the applicant has signalled his intention to enter the European phase before the EPO as elected office by
performing at least one of the acts listed in Rule 107(1) EPC (former Rule 104(b)(1) EPC; see OJ EPO 5/1999, 329).

3. As from 1 February 2003 the last mentioned condition, that the applicant must have signalled his intention to enter the
European phase, will no longer apply. Access to the file of the international preliminary examination (application filed as from
1 July 1998) will be afforded by the EPO after publication of the international application and completion of the International
Preliminary Examination Report. In all other respects the notice published in OJ EPO 5/1999, 329, remains valid.




150
                                                                                                                              Article 150 – OJ 2001, 601



                                                                                                                                                                Article 150 – OJ 2001, 601




PCT
Amended Agreement1

OJ 2001, 601
between the European Patent Organisation and the International Bureau of the World Intellectual Property Organization in
relation to the functioning of the European Patent Office as an International Searching Authority and International Preliminary
Examining Authority under the Patent Cooperation Treaty

Preamble

The European Patent Organisation and the International Bureau of the World Intellectual Property Organization,

Considering that the Agreement of October 1, 1997, under Articles 16(3)(b) and 32(3) of the Patent Cooperation Treaty, as
well as Articles 154 and 155 of the European Patent Convention, in relation to the functioning of the European Patent Office
as an International Searching Authority and International Preliminary Examining Authority under the Patent Cooperation
Treaty was concluded for a period of 10 years from January 1, 1998, to December 31, 2007,

Desirous to continue the functioning of the European Patent Office as an International Searching Authority and International
Preliminary Examining Authority under the Patent Cooperation Treaty,

Hereby agree as follows:

Article 1
Terms and Expressions
(1) For the purposes of this Agreement:

(a) “Treaty” means the Patent Cooperation Treaty;
(b) “Regulations” means the Regulations under the Treaty;
(c) “Administrative Instructions” means the Administrative Instructions under the Treaty;
(d) “Article” (except where a specific reference is made to an Article of this Agreement) means an Article of the Treaty;
(e) “Rule” means a Rule of the Regulations;
(f) “Contracting State” means a State party to the Treaty;
(g) “the Authority” means the European Patent Office;
(h) “the International Bureau” means the International Bureau of the World Intellectual Property Organization;
(i) “Convention” means the Convention on the Grant of European Patents (European Patent Convention).

(2) All other terms and expressions used in this Agreement which are also used in the Treaty, the Regulations or the
Administrative Instructions have, for the purposes of this Agreement, the same meaning as in the Treaty, the Regulations and
the Administrative Instructions.

Article 2
Basic Obligations
(1) The Authority shall carry out international search and international preliminary examination in accordance with, and
perform such other functions of an International Searching Authority and International Preliminary Examining Authority as are
provided under, the Treaty, the Regulations, the Administrative Instructions and this Agreement. In carrying out international
search and international preliminary examination, the Authority shall apply and observe all the common rules of international
search and of international preliminary examination and, in particular, shall be guided by the PCT Search Guidelines and the
PCT Preliminary Examination Guidelines.

(2) The Authority and the International Bureau shall, having regard to their respective functions under the Treaty, the
Regulations, the Administrative Instructions and this Agreement, render, to the extent considered to be appropriate by both
the Authority and the International Bureau, mutual assistance in the performance of their functions there under.
1
    The amendments mainly affect the provisions of Article 3(4)(a)(ii)-(c): in the future, the EPO may limit its activity as a PCT authority. In a first step, as of
    1 March 2002, the EPO shall cease to carry out international searches and international preliminary examinations for applications of American origin in
    the fields of biotechnology and business methods, as well as international preliminary examinations in the field of telecommunications. In addition,
    paragraph (3) of Annex C, Part II has been amended and paragraph (6) introduces a further possibility for providing fee refunds.




                                                                                                                                                               151
Article 150 – OJ 2001, 601



Article 3
Competence of Authority
(1) The Authority shall act as International Searching Authority for any international application filed with the receiving Office
of, or acting for, any Contracting State, provided that the receiving Office specifies the Authority for that purpose, that such
application, or a translation thereof furnished for the purposes of international search, is in the language or one of the
languages specified in Annex A to this Agreement and, where applicable, that the Authority has been chosen by the
applicant.

(2) The Authority shall act as International Preliminary Examining Authority for any international application filed with the
receiving Office of, or acting for, any Contracting State, provided that the receiving Office specifies the Authority for that
purpose, that, for such application, the international search is or has been performed by the Authority or the industrial property
Office of a State party to the Convention and, where applicable, that the Authority has been chosen by the applicant.

(3) Where an international application is filed with the International Bureau as receiving Office under Rule 19.1(a)(iii),
paragraphs (1) and (2) apply as if that application had been filed with a receiving Office which would have been competent
under Rule 19.1(a)(i) or (ii), (b) or (c) or Rule 19.2(i).

(4)(a) Notwithstanding paragraphs (1) and (2), if the work load of the Authority reaches such a level that, because of its then
existing facilities, it cannot perform the tasks assumed by it under this Agreement without risks for its proper functioning under
the Convention, the Authority may

(i) entrust any industrial property Office of a State party to the Convention with work in respect of international search or
international preliminary examination to be carried out under the responsibility of the Authority;

(ii) notify the International Bureau either that it will not carry out international search or international preliminary examination or
both in respect of international applications filed with any receiving Office of or acting for a State whose nationals or residents
may choose that Office acting as an International Searching and/or International Preliminary Examining Authority or that it will
carry out international search or international preliminary examination or both in respect of such international applications but
only for a given number of applications each year or only in respect of certain fields of technology.

(b) Any limitation under subparagraph (a)(ii) shall take effect on the date agreed upon between the receiving Office and the
Authority and specified in the notification, provided that that date is at least one month later than the date on which the
notification is received by the International Bureau. If such a date is not agreed upon by the receiving Office and the Authority,
the limitation shall take effect three months from the date of receipt of the notification by the Authority to the International
Bureau. The International Bureau shall promptly publish in the Gazette any notification under this subparagraph.

(c) The initial duration of any limitation under subparagraph (a)(ii) shall not exceed a period of three years and may be
extended one or more times for a period not exceeding two years provided that notice of three months is given prior to the
expiration of the preceding period.

Article 4
Subject Matter Not Required to Be Searched or Examined
The Authority shall not be obliged to search, by virtue of Article 17(2)(a)(i), or examine, by virtue of Article 34(4)(a)(i), any
international application to the extent that it considers that such application relates to subject matter set forth in Rule 39.1
or 67.1, as the case may be, with the exception of the subject matter specified in Annex B to this Agreement.

Article 5
Fees and Charges
(1) A schedule of all fees of the Authority, and all other charges which the Authority is entitled to make, in relation to its
functions as an International Searching Authority and International Preliminary Examining Authority, is set out in Annex C to
this Agreement.

(2) The Authority shall, under the conditions and to the extent set out in Annex C to this Agreement:

(i) refund the whole or part of the search fee paid, or waive or reduce the search fee, where the international search report
can be wholly or partly based on the results of an earlier search made by the Authority (Rules 16.3 and 41.1);

(ii) refund the search fee where the international application is withdrawn or considered withdrawn before the start of the
international search.




152
                                                                                                 Article 150 – OJ 2001, 601




(3) The Authority shall, under the conditions and to the extent set out in Annex C to this Agreement, refund the whole or part
of the preliminary examination fee paid where the demand is considered as if it had not been submitted (Rule 58.3) or where
the demand or the international application is withdrawn by the applicant before the start of the international preliminary
examination.

Article 6
Classification
For the purposes of Rules 43.3(a) and 70.5(b), the Authority shall indicate solely the International Patent Classification.

Article 7
Languages of Correspondence Used by the Authority
For the purposes of correspondence, including forms, other than with the International Bureau, the Authority shall use the
language or one of the languages indicated, having regard to the language or languages indicated in Annex A and to the
language or languages whose use is authorized by the Authority under Rule 92.2(b), in Annex D.

Article 8
International-Type Search
The Authority shall carry out international-type searches to the extent decided by it.

Article 9
Entry into Force
This Agreement, as amended, shall enter into force on November 1, 2001.

Article 10
Duration and Renewability
This Agreement shall remain in force until December 31, 2007. The parties to this Agreement shall, no later than
January 2007, start negotiations for its renewal.

Article 11
Amendment
(1) Without prejudice to paragraphs (2) and (3), amendments may, subject to approval by the Assembly of the International
Patent Cooperation Union, be made to this Agreement by agreement between the parties hereto; they shall take effect on the
date agreed upon by them.

(2) Without prejudice to paragraph (3), amendments may be made to the Annexes to this Agreement by agreement between
the Director General of the World Intellectual Property Organization and the President of the European Patent Office; they
shall take effect on the date agreed upon by them.

(3) The President of the European Patent Office may, by a notification to the Director General of the World Intellectual
Property Organization:

(i) add to the indications of languages contained in Annex A to this Agreement;

(ii) amend the schedule of fees and charges contained in Annex C to this Agreement;

(iii) amend the indications of languages of correspondence contained in Annex D to this Agreement.

(4) Any amendment notified under paragraph (3) shall take effect on the date specified in the notification, provided that, for
any increase of fees or charges contained in Annex C, that date is at least one month later than the date on which the
notification is received by the International Bureau.

Article 12
Termination
(1) This Agreement shall terminate before December 31, 2007:

(i) if the European Patent Organisation gives the Director General of the World Intellectual Property Organization written
notice to terminate this Agreement; or

(ii) if the Director General of the World Intellectual Property Organization gives the European Patent Organisation written
notice to terminate this Agreement.




                                                                                                                          153
Article 150 – OJ 2001, 601




(2) The termination of this Agreement under paragraph (1) shall take effect one year after receipt of the notice by the other
party, unless a longer period is specified in such notice or unless both parties agree on a shorter period.

In witness whereof the parties hereto have executed this Agreement.

Done at Geneva, this 31st October 2001, in two originals in the English, French and German languages, each text being
equally authentic.

For the European Patent Organisation by:

Ingo Kober
President
European Patent Office

For the International Bureau by:

Kamil Idris
Director General
World Intellectual Property Organization

Annex A
Languages

Under Article 3 of the Agreement, the Authority specifies the following languages:

English, French, German, and, where the receiving Office is the industrial property Office of Belgium or the Netherlands,
Dutch.

Annex B
Subject Matter Not Excluded from Search or Examination

The subject matter set forth in Rule 39.1 or 67.1 which, under Article 4 of the Agreement, is not excluded from search or
examination, is the following:

all subject matter searched or examined under the European patent grant procedure in application of the equivalent
provisions of the Convention.

Annex C
Fees and Charges

Part I. Schedule of Fees and Charges

                                    Kind of fee or charge                                              Amount
                                                                                                       (Euro)
                                    Search fee (Rule 16.1(a))                                            9452
                                    Additional fee (Rule 40.2(a))                                        9451
                                    Preliminary examination fee (Rule 58.1(b))                         1 5331,3
                                    Additional fee (Rule 68.3(a))                                      1 5331,2
                                    Protest fee (Rules 40.2(e) and 68.3(e))                            1 0222
                                    Cost of copies (Rules 44.3(b), 71.2(b) and 94.1)),
                                    per page                                                                 0.60

Part II. Conditions for and Extent of Refunds or Reductions of Fees

(1) Any amount paid by mistake, without cause, or in excess of the amount due, for fees indicated in Part I shall be refunded.



2
    This fee is reduced by 75% where the applicant or, if there are two or more applicants, each applicant is a natural person and is a national of and
    resides in a State not party to the European Patent Convention, which fulfils the requirements for the corresponding reduction of certain PCT fees as
    specified in the Schedule of Fees annexed to the PCT Regulations (see also corresponding footnote to the Annex C(IB) and PCT Gazette No. 50/1995,
    pages 19233 and 19234), and in accordance with the decision of the EPO’s Administrative Council of October 11, 2000 (OJ EPO 2000, 446).
3
    For the fees applicable as of 3 January 2002 see the Schedule of fees and costs (Supplement to OJ EPO 11/2001).




154
                                                                                                                            Article 150 – OJ 2003, 574




(2) Where the international application is withdrawn or considered withdrawn, under Article 14(1), (3) or (4), before the start of
the international search, the amount of the search fee paid shall, upon request, be fully refunded.

(3) Where the Authority benefits from an earlier search (including a privately commissioned “standard” search) already made
by the Authority on an application whose priority is claimed for the international application, 100% or 50% of the search fee
paid shall be refunded, depending upon the extent to which the Authority benefits from the earlier search.

(4) In the cases provided for under Rule 58.3, the amount of the preliminary examination fee paid shall be fully refunded.

(5) Where the international application or the demand is withdrawn before the start of the international preliminary
examination, 75% of the preliminary examination fee paid shall be refunded.

(6) The Authority may provide further refunds of the international preliminary examination fee under the conditions and to the
extent laid down by it.

Annex D
Languages of Correspondence

Under Article 7 of the Agreement, the Authority specifies the following languages:

English, French or German, depending on the language in which the international application is filed or translated.


                                                                                                                                                             Article 150 – OJ 2003, 574




PCT
Changes in respect of PCT applications filed as of 1 January
2004

OJ 2003, 574
As part of the ongoing reform of the PCT a number of changes agreed upon by the PCT Assembly will take effect as from 1
January 2004. The most significant changes in so far as they affect the EPO as PCT Authority and designated or elected
Office are summarised below. For a complete synopsis of the rule changes see PCT Newsletter 10/2002 and 10/2003 and
WIPO website www.wipo.int.

Enhanced international search and preliminary examination

For all PCT applications filed as from 1 January 2004 an enhanced international search system will apply. Besides the current
international search report (ISR), the International Searching Authority will issue an "international search opinion", ie a
preliminary non-binding written opinion on the issues of novelty, inventive step and industrial applicability (WO/ISA - Rule
43bis PCT). The enhanced international search system is governed by Chapter I of the PCT. The WO/ISA will be prepared at
the same time as the ISR for delivery to the applicant and the International Bureau of WIPO, however while the ISR will be
published together with the international application at 18 months from the priority date, the WO/ISA will not be published;
rather if no PCT Chapter II demand is filed, it will be communicated to the designated Offices by the International Bureau as
an “international preliminary report on patentability” (IPRP Chapter I - Rule 44bis PCT); it will be made available for public
inspection at 30 months from the priority date by the International Bureau (Rule 44ter PCT and Rule 94.1(b) PCT) and,
subject to national law, by the designated Offices. In content the WO/ISA is intended to be similar to a current detailed written
opinion under PCT Chapter II (see OJ EPO 11/2001, 539)1.



1
    Note however that the rationalised Chapter II procedure described therein will still apply to international applications filed before 1.1.2004 even if the
    demand is submitted after this date.




                                                                                                                                                            155
Article 150 – OJ 2004, 305




The aim of this new procedure is to bring forward a report akin to the present preliminary examination report thus allowing the
applicant to assess at a much earlier stage whether to proceed to national/regional phase entry. However, the applicant's
right to file a PCT Chapter II demand remains intact. The time limit for filing a demand is 3 months from the issue of the ISR
and WO/ISA or 22 months from the priority date whichever is later (Rule 54bis PCT). In contrast to the procedure under PCT
Chapter I which provides no opportunity for dialogue between applicant and ISA (except the opportunity to present "informal"
written comments to the International Bureau if so desired - no express provision for this is made in the PCT Regulations), the
applicant has the right under Article 34 Rule 66.1 and Rule 66.1bis PCT to submit arguments and/or amendments in response
to the WO/ISA within the same time limit as that for filing the demand (see also Rule 66.4bis PCT). A written opinion prepared
by the EPO as ISA will be considered as first written opinion under PCT Chapter II before the EPO as IPEA. Whether a
further written opinion is issued before establishment of the IPER is entirely at the discretion of the EPO. The IPER will
continue to be established at around 28 months from the priority date (Rule 69 PCT) and will be communicated by the
International Bureau to all elected Offices as an “international preliminary report on patentability Chapter II” (Rule 70 PCT) at
30 months from the priority date.

Streamlined designation system

The revised designation system provides that on filing the international application the applicant obtains automatic all
inclusive coverage of all designations available under the PCT including all types of protection and national/regional
protection without the need to designate individual contracting states (Rule 4.9 PCT). The right to withdraw individual
designations will remain. A similar provision for elections under PCT Chapter II has been introduced, ie all eligible states will
be considered elected on filing a demand (Rule 53.7 PCT).

Flat international filing fee

The current basic fee and designation fees are to be abolished and replaced by a flat international filing fee2 which will include
the prescribed fee for every designation. The amount of the flat international filing fee has been set at CHF 1400.

Powers of attorney - waiver

The EPO will, pursuant to new rule 90.5(c) PCT, waive the requirement under rule 90.5(a)(ii) PCT that a copy of any general
power of attorney be attached to the request, demand or separate notice. The EPO will also, pursuant to rule 90.4(d) PCT,
waive the requirement under rule 90.4(b) PCT to submit a separate power of attorney.


                                                                                                                              Article 150 – OJ 2004, 305




PCT
EPO discontinues its rationalised international preliminary
examination procedure (OJ EPO 2001, 539)

OJ 2004, 305
The notice concerning changes in respect of PCT applications filed as of 1 January 2004 (OJ EPO 2003, 574) is clarified as
follows:

Now that the search report on international applications filed on or after 1 January 2004 is accompanied by a written opinion
on patentability from the International Searching Authority (see Rule 43bis PCT), the EPO has discontinued the rationalised
international preliminary examination procedure described in Nos. I to IV of the President's notice dated 2 November 2001
(OJ EPO 2001, 539). Consequently, no request for "detailed" examination will be required, and the fee refund for the
rationalised procedure is no longer available.


2
    The current fee for each page in excess of 30 will remain.




156
                                                                                                   Article 150 – OJ 2003, 631




The rationalised procedure will however still apply to international applications filed before 1 January 2004 even if the demand
is filed later.


                                                                                                                             Article 150 – OJ 2003, 631




PCT
Notice from the President of the European Patent Office dated
30 November 2003 concerning refund of search fees

OJ 2003, 631
1. The provisions set out in Annex C, Part II(3) of the Agreement between the European Patent Organisation and WIPO
under the PCT1, governing the refund of international search fees where the international search can be based on an earlier
search report drawn up by the EPO, have been amended with effect from 1 January 2004 in view of the extended tasks
entrusted to the EPO as International Searching Authority as from that date2.

2. As from 1 January 2004, these provisions will read as follows:

“(3) Where the Authority benefits from an earlier search (including a privately commissioned "standard" search) already made
by the Authority on an application whose priority is claimed for the international application and depending upon the extent to
which the Authority benefits from the earlier search in carrying out the international search and any other task entrusted to it,
the search fee paid shall be refunded to the extent provided for in a communication from the Authority to the International
Bureau and published in the Gazette.”

The levels of refund will no longer be expressed as percentages but as specific amounts which reflect the extent to which the
EPO, when carrying out the international search, benefits from an "earlier search" it has already performed.




1
    For the version currently in force, see OJ EPO 2001, 601 (609)
2
    See OJ EPO 2003, 574.




                                                                                                                            157
Article 150 – OJ 2003, 631




3. The amounts refundable in such circumstances will be as follows:

                 Earlier search                                    Level of benefit        Amount of refund

                 Cases                                                                     EUR

                 (1)

                 European search (Art. 78(2) EPC)                  full                    690.00

                                                                   partial                 172.50

                 (2)

                 International search (Art. 15(1) PCT)             full                    1 550.00

                 on an international application filed on or       partial                 387.50
                 after 1 January 2004



                 (3)

                 - International search (Art. 15(1) PCT) on an     full                    945.00
                 international application filed before 1
                 January 2004                                      partial                 236.25

                 - International-type search (Art. 15(5) PCT)

                 - Standard search

                 - Search on behalf of a national office (BE,
                 FR, LU, NL, TR)

If the EPO can base its search report wholly on the earlier search, it either refunds in full the

fee paid for that search (table cases 1 and 2) or - where that would be an inappropriate result (table cases 3) - refunds the
international search fee in the amounts applicable hitherto.

If the EPO can base its search partly on the earlier search, it makes a 25% refund in accordance with the same principles.

4. The criteria determining the refund rate (100% or 25%) applicable are as laid down in points 2 and 3 of the Notice dated
13 December 20013. The refund procedure likewise remains unchanged.

5. This Notice applies to all international patent applications filed on or after 1 January 2004.




3
    OJ EPO 2002, 56.




158
                                                                                                   Article 150 – OJ 2005, 463



                                                                                                                             Article 150 – OJ 2005, 463




PCT
Notice from the President of the European Patent Office dated
1 July 2005 concerning revised amounts of the refund of
search fees in the light of the introduction of the extended
European search report as from 1 July 2005

OJ 2005, 463
By Notice from the President of the EPO dated 30 November 20031 concerning refund of search fees, the provisions of Annex
C, Part II(3) of the Agreement between the European Patent Organisation and WIPO under the PCT2 were amended.

In view of the introduction of the extended European search report as from 1 July 2005 (see OJ EPO 2005, 5 and 435)
paragraph 3 case 1 of the Notice of the President of 30 November 2003 is now further amended.

For ease of reference paragraph 3 of that Notice as now revised as well as Annex C Part II(3) of the Agreement are published
in full below:

Annex C Part II

(3) Where the Authority benefits from an earlier search (including a privately commissioned "standard" search) already made
by the Authority on an application whose priority is claimed for the international application and depending upon the extent to
which the Authority benefits from the earlier search in carrying out the international search and any other task entrusted to it,
the search fee paid shall be refunded to the extent provided for in a communication from the Authority to the International
Bureau and published in the Gazette.

Paragraph 3 of the Notice from the President of the European Patent Office dated 30 November 2003 as now revised reads:

The amounts refundable in such circumstances will be as follows:

                  Earlier search                                 Level of benefit for              Amount of
                                                                 subsequent search                   refund
                  Cases                                                                               (EUR)

                  (1)                                            full                                 960.00

                  European search                                partial                              240.00

                  (Art. 78(2) EPC) on an application filed
                  on or after 1 July 2005

                  European search                                full                                 690.00

                  on an application filed before 1 July          partial                              172.50
                  2005



                  (2)                                            full                               1 550.00

                  International search                           partial                              387.50

                  (Art. 15(1) PCT) on an international
                  application filed on or after 1 January
                  2004


1
    OJ EPO 12/2003, 631.
2
    See OJ EPO 12/2001, 601 (609).




                                                                                                                            159
Article 150 – OJ 2006, 111




                   (3)                                                       full                                        945.00

                   - International search                                    partial                                     236.25

                   (Art. 15(1) PCT) on an international
                   application filed before 1 January 2004

                   - International-type search

                   (Art. 15(5) PCT)

                   - Standard search

                   - Search (without written opinion) on a
                   national application made on behalf of
                   a national office (BE, FR, LU, NL, TR)3


With regard to searches drawn up on European and international patent applications filed on or after 1 July 2005, the Notice
from the President of the European Patent Office dated 13 November 2001 concerning refund of search fees4 is replaced by
the Notice from the President of the European Patent Office dated 1 July 2005 concerning the criteria for refund of search
fees, OJ EPO 7/2005,433. In all other respects the Notice from the President of the European Patent Office of 30 November
2003 remains in full force and effect.


                                                                                                                                                     Article 150 – OJ 2006, 111




PCT
Notice from the President of the European Patent Office dated
1 January 2006 concerning revised amounts of the refund of
search fees in the light of the new working agreement with
France as from 1 January 2006

OJ 2006, 111
By Notice from the President of the EPO dated 30 November 20031 concerning refund of search fees, the provisions of Annex
C, Part II(3) of the Agreement between the European Patent Organisation and WIPO under the PCT2 were amended. The
notice was modified on 1 July 20053

In view of the adaptation of the working agreement on prior-art searches for national applications between the Organisation
and France as from 1 January 2006, paragraph 3 case 2 of the Notice of the President is now further amended.

For ease of reference paragraph 3 of that Notice as now revised as well as Annex C Part II(3) of the Agreement are published
in full below:




3
    Currently negotiations on revision of the relevant agreements are taking place between the EPO and the contracting states concerned with a view to
    the EPO drawing up written opinions accompanying those search reports.
4
    Referred to in paragraph 4 of the Notice from the President of the European Patent Office of 30 November 2003, OJ EPO 12/2003, 631.
1
    OJ EPO 2003, 631.
2
    See OJ EPO 2001, 601 (609).
3
    OJ EPO 2005, 463.




160
                                                                                                                   Article 150 – OJ 2006, 111




Annex C Part II

(3) Where the Authority benefits from an earlier search (including a privately commissioned "standard" search) already made
by the Authority on an application whose priority is claimed for the international application and depending upon the extent to
which the Authority benefits from the earlier search in carrying out the international search and any other task entrusted to it,
the search fee paid shall be refunded to the extent provided for in a communication from the Authority to the International
Bureau and published in the Gazette.

Paragraph 3 of the Notice from the President of the European Patent Office dated 30 November 2003 as now revised reads:

The amounts refundable in such circumstances will be as follows:




                Earlier search                                                              Level of                Amount of
                                                                                            benefit for             refund
                Cases
                                                                                            subsequent              (EUR)
                                                                                            search
                (1) European search (Art. 78(2) EPC) on an application                      full                    960.00
                    filed on or after 1 July 2005
                                                                                            partial                 240.00

                European search on an application filed before 1 July                       full                    690.00
                2005
                                                                                            partial                 172.50

                (2) - International search (Art. 15(1) PCT) on an                           full                    1 550.00
                international application filed on or after 1 January 2004
                                                                                            partial                 387.50
                - search with written opinion on a national application
                made on behalf of a national office (FR)

                (3) - International search (Art. 15(1) PCT) on an                           full                    945.00
                international application filed before 1 January 2004
                                                                                            partial                 236.25
                - International-type search (Art. 15(5) PCT)

                - Standard search

                - Search without written opinion on a national
                application made on behalf of a national office (BE, FR,
                LU, NL, TR)


With regard to searches drawn up on European and international patent applications filed on or after 1 July 2005, the Notice
from the President of the European Patent Office dated 13 November 2001 concerning refund of search fees4 is replaced by
the Notice from the President of the European Patent Office dated 1 July 2005 concerning the criteria for refund of search
fees, OJ EPO 2005,433. In all other respects the Notice from the President of the European Patent Office of 30 November
2003 remains in full force and effect.




4
    Referred to in paragraph 4 of the Notice from the President of the European Patent Office of 30 November 2003, OJ EPO 2003, 631.




                                                                                                                                         161
Article 150 – OJ 2006, 252



                                                                                                                                                   Article 150 – OJ 2006, 252




PCT
Notice from the President of the European Patent Office dated
17 February 2006 concerning revised amounts of the refund of
search fees by the EPO acting as International Searching
Authority in the light of the adjustment of fees and prices as
from 1 April 2006

OJ 2006, 252
I. By Notice from the President of the EPO dated 30 November 20031 concerning refund of search fees, the public was
informed of the amendment to the provisions of Annex C, Part II(3) of the Agreement between the European Patent
Organisation and WIPO under the PCT2. Section 3 of this Notice was modified on 1 July 20053 in view of the introduction of
the extended European search report and on 1 January 20064 in view of the revised working agreement on prior-art searches
for national applications between the European Patent Organisation and France.

Section 3 of the Notice from the President dated 30 November 2003 is now further amended in view of the adjustment of fees
and prices with effect from 1 April 2006.5

II. Section 3 of the Notice from the President of the European Patent Office dated 30 November 2003 as hereby
revised and applicable as from 1 April 2006, now reads:

The amounts refundable in such circumstances will be as follows:



Earlier search                                                                                             Level of benefit           Amount of
Cases                                                                                                      for subsequent             refund
                                                                                                           search                     (EUR)

(1)
(1.1) European search (Art. 78(2) EPC) on an application filed
on or after 1 July 2005
and
                                                                                                           full                        960.00
- search fee paid before 1 April 2006                                                                      partial                     240.00
                                                                                                           full                       1 000.00
- search fee paid on or after 1 April 2006                                                                 partial                     250.00



(1.2) European search (Art. 78 (2) EPC) on an application filed before 1 July
2005
and
                                                                                                           full                        690.00
- search fee paid before 1 April 2006                                                                      partial                     172.50
                                                                                                           full                        720.00
- search fee paid on or after 1 April 2006                                                                 partial                     180.00

(2)

1
      OJ EPO 2003, 631.
2
      OJ EPO 2001, 601 (609).
3
      OJ EPO 2005, 463.
4
      OJ EPO 2006, 111.
5
      See Decision of the Administrative Council of 15 December 2005 amending the Rules relating to Fees, OJ EPO 2006, 8, and Decision of the President
      of the European Patent Office of 17 February 2006 revising the Office's fees and costs, OJ EPO 2006, 255.
6
      Only for national applications filed as from 1 July 2006.




162
                                                                                                       Article 150 – OJ 2006, 252




(2.1) International search (Art. 15(1) PCT) on an international application filed on or
after 1 January 2004
and
- search fee paid before 1 April 2006                                                        full                   1 550.00
                                                                                             partial                 387.50
- search fee paid on or after 1 April 2006                                                   full                   1 615.00
                                                                                             partial                 403.75
(2.2) Search with written opinion on a national application made on behalf of a
national office (FR, NL6, TR1)
and
                                                                                             full                   1 550.00
- search fee for the international application paid before 1 April 2006                      partial                 387.50
- search fee for the international application paid on or after 1 April 2006
                                                                                             full                   1 615.00
                                                                                             partial                 403.75


(3)
(3.1) International search (Art. 15(1) PCT) on an international application filed before
1 January 2004 or
- International-type search (Art. 15(5) PCT) or
- Standard search
and                                                                                      full                         945.00
- search fee paid before 1 April 2006                                                    partial                      236.25
                                                                                         full                         985.00
- search fee paid on or after 1 April 2006                                               partial                      246.25

(3.2) Search without written opinion on a national application made on behalf of a
national office (BE, FR, LU, NL, TR)
and
- search fee for the international application paid before 1 April 2006                      full                     945.00
                                                                                             partial                  236.25
- search fee for the international application paid on or after 1 April 2006
                                                                                             full                     985.00
                                                                                             partial                  246.25


If the EPO can base its search report wholly on the earlier search, the amounts of a full refund indicated above apply .

If the EPO can base its search partly on the earlier search, the amounts of a partial refund indicated above apply.

III. The Notice from the President of the European Patent Office of 30 November 2003 as revised by the present Notice
remains in full force and effect. An exception applies with regard to search reports drawn up on international patent
applications filed on or after 1 July 2005, to the extent that for these international applications Section 4 of the Notice from the
President of the European Patent Office of 30 November 2003 is replaced by the Notice from the President of the European
Patent Office dated 1 July 2005 concerning the criteria for refund of search fees.7




7
    JO OEB 2005, 433.




                                                                                                                               163
Article 150 – OJ 2002, 52



                                                                                                                         Article 150 – OJ 2002, 52




PCT
Notice from the President of the European Patent Office dated
26 November 2001 concerning limitation of the EPO's
competence as a PCT authority

OJ 2002, 52

Limitation criteria
1. Pursuant to Article 3(4)(a)(ii) of the PCT Agreement between the European Patent Organisation and the International
Bureau of the World Intellectual Property Organization, as amended with effect from 1 November 2001 (OJ EPO 2001, 601),
the European Patent Office (EPO) will not carry out

(a) international search in respect of any international application filed on or after 1 March 2002 by a national or resident
of the United States of America with the United States Patent and Trademark Office (USPTO) or the International
Bureau (IB) as receiving Office where such application contains one or more claims relating to the fields of biotechnology
or business methods, as defined by the International Patent Classification units indicated below in paragraphs 3 and 4.

(b) international preliminary examination in respect of any international application filed by a national or resident of the
United States of America with the USPTO or the IB as receiving Office where the corresponding demand is filed with the
EPO on or after 1 March 2002 and the application contains one or more claims relating to the fields of biotechnology or
business methods as referred to in sub-paragraph (a) above or to the field of telecommunication as defined by the
International Patent Classification unit indicated below in paragraph 5.

2. Without prejudice to the right of the EPO to issue any further notice under Article 3(4) of the PCT Agreement which it may
consider necessary, the initial duration of these limitations will be three years (Article 3(4)(c) of the PCT Agreement).

International Patent Classification

3. Biotechnology

C12M            Apparatus for enzymology or microbiology
C12N            Micro-organisms or enzymes; compositions thereof
C12P            Fermentation or enzyme-using processes to synthesise a desired chemical
                compound or composition or to separate optical isomers from a racemic mixture
C12Q            Measuring or testing processes involving enzymes or micro-organisms;
                compositions or test papers therefore; processes of preparing such
                compositions; condition-responsive control in microbiological or enzymological
                processes
C07K            Peptides
G01N33/50       (including subdivisions)
                Chemical analysis of biological material, e.g. blood, urine; testing involving
                biospecific ligand binding methods; immunological testing
A61K39          Medicinal preparations containing antigens or antibodies
A61K48          Medicinal preparations containing genetic material which is inserted into cells of
                the living body to treat genetic diseases; gene therapy
A01H            New plants or processes for obtaining them; plant reproduction by tissue culture
                techniques

For information: US classes covering corresponding subject-matter

424             Drug, bio-affecting and body treating compositions
435             Chemistry: molecular biology and microbiology



164
                                                                                                                            Article 150 – OJ 2002, 52




436                  Chemistry: analytical and immunological testing
514                  Drug, bio-affecting and body treating compositions
530                  Chemistry: natural resins or derivatives; peptides or proteins; lignins or reaction
                     products thereof
536                  Organic compounds—part of the class 532-570 series
800                  Multicellular living organisms and unmodified parts thereof
930                  Peptide or protein sequence

4. Business method related inventions

GO6F17/60            Digital computing or data processing equipment or methods, specially adapted
                     for specific functions: administrative, commercial, managerial, supervisory or
                     forecasting purposes. If an application falls within this subgroup but does not
                     relate to business methods, the EPO’s competence is not affected.

For information: US class covering corresponding subject-matter

705                  Data processing: financial, business practice, management, or cost/price
                     determination

5. Telecommunication

H04                  Electric communication technique with the exception of H04N: pictorial
                     communication, e.g. television

For information: US classes covering corresponding subject-matter

370                  Multiplex communications
375                  Pulse or digital communications
379                  Telephonic communication
380                  Cryptography
381                  Electrical audio signal processing systems and devices
455                  Telecommunications
Notes

6. The EPO is no longer the competent authority within the meaning of Article 16(3)(b)1 and Article 32(3)2 PCT for
applications meeting the criteria defined in paragraph 1.

7. Paragraph 1 also applies to applications filed with the IB rather than the USPTO by two or more applicants,

- at least one of whom is a national or resident of the USA, and

- none of whom are nationals or residents of an EPC contracting state.

8. It is not possible to reassign competence to the EPO by changing the applicant after the application has been filed with the
USPTO or the IB.

9. The limitation criteria in paragraph 1(b) apply to all demands for international preliminary examination received at the EPO
on or after 1 March 20023, which means they are also applicable to applications filed before 1 March 2002 for which the EPO
was still the competent International Searching Authority.




1
      The receiving Office deletes the indication of any non-competent International Searching Authority ex officio (Receiving Office Guidelines, No. 115,
      PCT Gazette - IV, 29 of 17 September 1998).
2
      Demands for international preliminary examination submitted to a non-competent authority are subject to Rule 59.3 PCT.
3
      Demands for international preliminary examination submitted to a non-competent authority are subject to Rule 59.3 PCT.




                                                                                                                                                         165
Article 150 – OJ 2006, 555



                                                                                                                          Article 150 – OJ 2006, 555




PCT
Notice from the European Patent Office dated 27 July 2006
concerning prolongation of the limitation of the EPO’s
competence as a PCT Authority

OJ 2006, 555
The limitation of the EPO’s competence as a PCT Authority concerning the field of business methods as set out most
recently in the Notice from the President of the EPO of 1 December 20041 and due to expire on 1 March 2007, is to be
prolonged for a further period of two years from 1 March 2007, i.e. until 1 March 2009.


                                                                                                                          Article 150 – OJ 2003, 633




PCT
Notice from the European Patent Office dated 31 October 2003
concerning the partial lifting of the limitation on the EPO's
competence as a PCT authority

OJ 2003, 633
Paragraphs 1(a) and (b) of the notice dated 26 November 2001 issued pursuant to Article 3(4)(a)(ii) of the Agreement
between the EPO and WIPO under the PCT (OJ EPO 1/2002, 52) are to be amended as follows:

The reference to the field of biotechnology is to be deleted from paragraphs 1(a) and (b) with effect for all international
applications filed as from 1 January 2004 and the reference to the field of telecommunication is to be deleted from paragraph
1(b) with effect for all demands for international preliminary examination filed as from 1 July 2004.

The effect of these changes is that the EPO will resume its competence as an International Searching Authority and
International Preliminary Examining Authority for international applications filed as from 1 January 2004 by nationals or
residents of the United States of America where such applications contain one or more claims relating to the field of
biotechnology as defined by the International Patent Classification units indicated in paragraph 3 of the notice dated 26
November 2001.

The EPO will also resume its competence as an International Preliminary Examining Authority in respect of demands for
international preliminary examination filed on or after 1 July 2004 by nationals or residents of the United States of America
where such demands contain one or more claims relating to the field of telecommunications as defined by the International
Patent Classification unit indicated in paragraph 5 of the notice dated 26 November 2001.

The reference to the field of business methods in paragraphs 1(a) and (b) remains intact; the EPO will thus continue not to be
competent to act as an International Searching Authority or International Preliminary Examining Authority in this respect for
the remainder of the term specified in paragraph 2 of the notice. In all other respects the notice remains in full force and
effect.




1
    OJ EPO 2005, 149. For the original notification see OJ EPO 2002, 52.




166
                                                                                                   Article 150 – OJ 2006, 149



                                                                                                                             Article 150 – OJ 2006, 149




PCT
Notice from the European Patent Office concerning limitation
of the EPO's competence as a PCT authority

OJ 2006, 149
The entry into force on 1 January 2006 of the revised 8th edition of the International Patent Classification (IPC) has given rise
to the following change in the Notice from the President of the EPO dated 26 November 2001 concerning limitation of the
EPO's competence as a PCT authority (OJ EPO 2002, 52 ff), prolonged in respect of business methods by Notice from the
EPO dated 1 December 2004 (OJ EPO 2005, 149):

Under IPC8 (2006), the "Business method related inventions" referred to in paragraph 4 of the above notice (old IPC class: G
06F17/60) now correspond to the following classes and sub-classes:

G06Q:

Data processing systems or methods, specially adapted for administrative, commercial, financial, managerial, supervisory or
forecasting purposes; systems or methods specially adapted for administrative, commercial, financial, managerial, supervisory or
forecasting purposes, not otherwise provided for

G06Q 10/00:

Administration, eg office automation or reservations; Management, eg resource or project management

G06Q 30/00:

Commerce, eg marketing, shopping, billing, auctions or e-commerce

G06Q 40/00:

Finance, eg banking, investment or tax processing; Insurance, eg risk analysis or pensions

G06Q 50/00:

Systems or methods specially adapted for a specific business sector, eg health care, utilities, tourism or legal services

G06Q 90/00:

Systems or methods specially adapted for administrative, commercial, financial, managerial, supervisory or forecasting
purposes, not involving significant data processing

G06Q 99/00:

Subject matter not provided for in other groups of this subclass




                                                                                                                            167
Article 150 – OJ 2002, 175



                                                                                                                          Article 150 – OJ 2002, 175




PCT
Information from the European Patent Office concerning
limitations of the EPO’s competence as a PCT authority1

OJ 2002, 175
It is recalled that the EPO has specified limitations concerning PCT applications for which, as from 1 March 2002, it will not
act as International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA).1

Applicants concerned are strongly advised to check carefully whether or not a given application falls under the
limitation before they indicate the EPO as ISA or file a demand with the EPO as IPEA.

Practical arrangements

The following practical arrangements will be established with respect to PCT applications where the applicant indicates the
EPO as ISA or files a demand with the EPO as IPEA although the EPO is no longer the competent ISA and/or IPEA:

ISA/EPO

1. The EPO will perform a competence check on search copies of PCT/US or PCT/IB applications (that is, PCT applications
filed with the United States Patent and Trademark Office (USPTO) or the International Bureau as receiving Office filed on or
after 1 March 2002). This will be done immediately after receipt of the search copy (that is, the copy of the international
application which is sent to the ISA by the receiving Office) within the framework of the so-called preclassification.

2. Where the EPO finds that it was indicated as the ISA although the application falls under the limitation as specified in OJ
1/2002, 52-552, it will delete that indication and indicate the USPTO as the competent ISA ex officio.

3. The EPO will inform the applicant, the IB and the USPTO accordingly (via a new version of Form PCT/ISA/224) and
transfer money received as the search fee in respect of the application to the USPTO. (Please note that a refund to the
applicant is not possible because the data necessary for such a transfer is not available to the EPO.)

IPEA/EPO

4. Where, as from 1 March 2002, a demand is filed with the EPO although it is not competent for the international preliminary
examination pursuant to the limitation as specified in the OJ 1/2002, 52-55 2, Rule 59.3(f) PCT applies.

5. The EPO will transmit the demand to the USPTO as the competent IPEA.

6. The EPO will inform the applicant, the IB and the USPTO accordingly (by Form PCT/IPEA/436) and refund any amount
paid in respect of the demand to the applicant.

Further clarification concerning applicability of limitations

7. Note that the limitations concerning PCT applications for which the EPO will not act as ISA and/or IPEA apply even if the
applicant has filed a concurrent Euro-direct application or has requested concurrent regional phase entry before the
EPO. In addition, it should be noted that in the field of business methods, as a rule, no European search could be expected in
any event.3




1
    see OJ EPO 1/2002, 52.
2
    See also PCT Gazette 52/2001, Section IV (pages 24248-24250).
3
    See also the PCT Newsletter No. 9/2001, page 5.




168
                                                                                                                  Article 150 – OJ 1999, 300



                                                                                                                                                Article 150 – OJ 1999, 300




Decision of the President of the European Patent Office dated
25 March 1999 concerning the carrying out of international-
type searches and the setting of a new fee for such searches

OJ 1999, 300
Having regard to Article 10 EPC, Articles 3 and 6(4) RFees and Article 8 of the Agreement between the EPO and WIPO
under the PCT (OJ EPO 1998, 85), the President of the European Patent Office has decided as follows:

Article 1
Carrying out of international-type searches by the EPO
The European Patent Office shall, in its capacity as an International Searching Authority under the PCT, carry out an
international-type search (Article 15 PCT) on a national patent application if the application is filed with the patent authority of
a contracting state to the European Patent Convention and the national law of that state provides for an international-type
search.

Article 2
Fees for international-type searches
(1) Unless different terms have been agreed between the European Patent Organisation and the national patent authorities of
the contracting states, the fee for an international-type search under Section 2.2, No. 1 of the fees schedule shall be as
follows:

EUR 945 for patent applications in which no priority is claimed (first filings);

EUR 1 482 in all other cases.

(2) The equivalents of these fees in the currencies of the contracting states shall be as follows:

Article 3
This decision shall enter into force on 1 July 1999 and shall apply to patent applications filed on or after 1 July 1999.

Done at Munich, 25 March 1999
Ingo KOBER
President


                                                                                                                                                Article 150 – OJ 2002, 260




Notice from the European Patent Office dated 26 March 2002
concerning business methods1

OJ 2002, 260
PCT
It has become apparent in recent months that an ever increasing number of international applications for which the EPO is to
act as International Searching Authority and International Preliminary Examining Authority relate primarily to methods of doing
business2 and commonplace features relating to their technological implementation.


1
    Revised version of the publication in OJ EPO 2001, 482.
2
    See also Notice from the President of the European Patent Office dated 26 November 2001 concerning limitation of the EPO's competence as a PCT
    authority, published in OJ EPO 2002, 52.




                                                                                                                                               169
Article 150 – OJ 2002, 260




To avoid any doubt, the EPO wishes to remind applicants that pursuant to Rule 39.1(iii) PCT it will not carry out an
international search on an application to the extent that its subject-matter relates to no more than a method of doing business,
in the absence of any apparent technical character.

Moreover, claims which merely specify commonplace features relating to the technological implementation of such methods
will not be searched if the search examiner cannot establish any technical problem which might potentially have required an
inventive step for it to be overcome. In other words, in such cases it is not possible to carry out a meaningful search into the
state of the art (Article 17(2)(a) PCT).

In these cases either a declaration will be issued that no international search report will be established or, where appropriate,
a partial search report only will be established pursuant to Article 17(2) PCT.

This may well have consequences for the procedure before the EPO as IPEA in view of the fact that claims relating to
inventions for which no international search report has been established need not be the subject of international preliminary
examination (Rule 66.1(e) PCT). Furthermore, the EPO is not required to carry out an international preliminary examination
on an application if its subject-matter is a method of doing business (Rule 67.1(iii) PCT).

EPC
The EPO also wishes to remind applicants that methods of doing business per se are excluded from patentability pursuant to
Article 52(2)(c) and (3) EPC. Claims of European patent applications which relate to such methods or merely specify
commonplace features relating to the technological implementation of such methods will not be searched if the search
examiner cannot establish any technical problem which might potentially have required an inventive step for it to be
overcome. In other words, in such cases it is not possible to carry out a meaningful search into the state of the art. Neither a
European nor a supplementary search report will then be established or, where appropriate, a partial search report only will
be established pursuant to Rule 45 EPC.




170
                                                                                            Article 150(2) – OJ 1993, 540



                                                                                                                       Article 150(2) – OJ 1993, 540




PCT
Notice from the President of the European Patent Office dated
18 June 1993 concerning the language of correspondence with
the EPO as an International Authority under the PCT

OJ 1993, 540
In accordance with Rule 1(1) EPC, any party may, when corresponding with the EPO, use any official language of the EPO
(English, French, German). Amendments to a European patent or European patent application must however be filed in the
language of the proceedings (Rule 1(2) EPC).

This applies equally to correspondence with the EPO as receiving Office, International Searching Authority or International
Preliminary Examining Authority under the PCT (Art. 150(2) EPC together with Rule 92.2(b) PCT and Section 104a of the
Administrative Instructions under the PCT).




                                                                                                                       171
Article 151 – OJ 1978, 271



                                                                                                                                             Article 151
                                                                                                                             Article 151 – OJ 1978, 271




PCT
Time for payment of the basic fee and the search fee
for international applications

OJ 1978, 271
Where the European Patent Office acts as a receiving Office under the Patent Cooperation Treaty (PCT), the basic fee and
the search fee for the international application, which falls due on the date of receipt of the international application, may be
paid up to one month after the date of receipt of the application without the applicant losing the international filing date.

The European Patent Office will not draw the applicant’s attention to the observance of this time limit for payment in the event
of lack of receipt of the amount of fees received on the date of receipt of the application.

Rules 15.4(a) and 16.1(b) PCT refer.

The provisions concerning payment of the

(a) transmittal fee, which is payable on the filing of the application (Article 152, paragraph 3, of the European Patent
    Convention), and the

(b) designation fees, which must be paid before the expiration of one year from the priority date (Rule 15.4(b) in conjunction
    with Article 2(xi) PCT) remain unaffected by this Communication.




172
                                                                                                  Article 151 – OJ 1992, 383



                                                                                                                            Article 151 – OJ 1992, 383




PCT
Decision of the President
of the European Patent Office dated 15 June 1992
concerning the late payment fee under Rule 16bis.2 PCT

OJ 1992, 383
The President of the European Patent Office,

having regard to Rule 16bis.2 PCT as amended with effect from 1 July 1992,

has decided as follows:

Article 1
Late payment fee
Payment of the transmittal fee, the basic fee, the search fee or the designation fees in response to an invitation issued by the
European Patent Office as receiving Office pursuant to Rule 16bis.1(a) or (b) PCT shall be supplemented by a late payment
fee pursuant to Rule 16bis.2 PCT.

Article 2
Amount of the late payment fee
The late payment fee shall be 50% of the amount of the unpaid fees specified in the invitation but shall neither exceed the
amount of the basic fee as specified in the PCT Schedule of Fees nor be less than the amount of the transmittal fee as
specified in Article 2, item 18 of the EPO Rules relating to Fees.

Article 3
Entry into force
This decision shall enter into force on 1 July 1992.

Done at Munich, 15 June 1992
PAUL BRAENDLI
President


                                                                                                                            Article 151 – OJ 1998, 282




PCT
Decision of the President of the European Patent Office dated
26 February 1998 concerning the late-payment fee under
Rule 58bis.2 PCT

OJ 1998, 282
The President of the European Patent Office,

having regard to Rule 58bis.2 PCT which will enter into force on 1 July 1998,

has decided as follows:




                                                                                                                            173
Article 151 – OJ 1994, 538



Article 1
Late-payment fee
Payment of the handling fee and the preliminary examination fee in response to an invitation from the European Patent Office
as International Preliminary Examining Authority pursuant to Rule 58bis.1(a) PCT shall be supplemented by a late-payment
fee pursuant to Rule 58bis.2 PCT.

Article 2
Amount of the late-payment fee
The late-payment fee shall be 50% of the amount of unpaid fees which is specified in the invitation; it shall however be at
least equal to but not more than double the amount of the handling fee under Rule 57.2(a) PCT.

Article 3
Entry into force
This decision shall enter into force on 1 July 1998.


                                                                                                                          Article 151 – OJ 1994, 538




PCT
Notice Concerning the filing of authorisations with the EPO as
receiving Office for international applications (Rule 90.4 PCT)

OJ 1994, 538
Applicants filing international applications with the EPO as receiving Office are advised that appointment of a professional
representative requires a declaration to that effect made either in the request itself or in a separate power of attorney. The
request or power of attorney must always be signed by the applicant; if there is more than one applicant, it must be
signed by all those for whom the representative is going to act. See also Rule 90 PCT and points 103 and 104 in Volume
1 of the PCT Applicant’s Guide.

For such applications, the simplified system which operates for European applications1 (whereby a professional
representative whose name appears on the EPO list and who identifies himself as such need not normally file a signed
authorisation) cannot be used.




1
    Decision of the President of the EPO under Rule 101(1), second sentence, EPC dated 19 July 1991 (OJ EPO 1991, 489).




174
                                                                                                                           Article 153 – OJ 1999, 747



                                                                                                                                                                           Article 153
                                                                                                                                                           Article 153 – OJ 1999, 747




Guide for applicants - part 2: PCT procedure before the EPO -
"euro-PCT"

OJ 1999, 747
A new part 2 of the information brochure "How to get a European patent" (9th edition, updated 1997) entitled "PCT procedure
before the EPO - euro PCT" is due for publication in mid January 2000. The brochure is available, free of charge, from the
EPO Information Offices in Munich, Vienna, The Hague and Berlin. It is also available on Internet.

The brochure replaces the information for PCT applicants published in OJ EPO 1992, 245, in Supplement NO. 1 to OJ EPO
12/1992, in OJ EPO 1994, 131 and OJ EPO 1997, 593.


                                                                                                                                                           Article 153 – OJ 2006, 447




Notice from the European Patent Office dated 21 July 2006
concerning revision of Form 1200 (Entry into the European
phase)

OJ 2006, 447
The EPO has revised its Form 12001 (Entry into the European phase). The revised form and amended Notes are reproduced
below.

Applicants are advised to use the new (05.06) form in future for international applications entering the European phase. They
may however continue to use the old (12.03) version without prejudice to their rights.

Updated Form 1200 incorporates the changes as regards EPC contracting and extension states which have taken place since
2004, and a redesigned layout brings out the individual sections more clearly and makes the form easier to complete. There
are no plans for a Word version in addition to the editable one in PDF format.

The changes made in the updated form are explained below.

1. Substantive amendments

1.1 Section 1 – Applicant

An extra box enables applicants to indicate if details of further applicants have been given on an additional sheet.

Reason: Under Rule 26.2bis(b) PCT, objections are no longer always raised in the international phase if there are multiple
applicants and information about address, nationality and residence/place of business is missing. The designated Office can
however require that this information be provided (Rule 51bis.1(a)(vii) PCT).

1.2 Section 2 – Representative's address

The reference to "telex" has been deleted, as the EPO no longer uses this form of communication (OJ EPO 2004, 374).

1.3 Section 3 – Authorisation

1
    The new form ("EPA/EPO/OEB Form 1200 05.06") is obtainable free of charge from the EPO (preferably Vienna but also Munich, The Hague and
    Berlin) and the central industrial property offices of the contracting states. An editable version in PDF format is also available on the EPO website at
    "http://www.epo.org".




                                                                                                                                                          175
Article 153 – OJ 2006, 447




"Individual authorisation" has been replaced by "Authorisation", in line with the terminology used in the EPC and EPO
Forms 1001, 1003 and 1004.

1.4 Section 4 – Request for examination

A new sub-section 4.2 for the request for examination (possibly in an admissible non-EPO language) has been added:

4.2 Waiver of the applicant's right to an invitation under Article 96(1) EPC (re maintaining the request for examination). This is
in line with Section 5a of the updated request for grant (EPO Form 1001, 07.05).

1.5 Section 6 – Documents intended for proceedings before the EPO

6.2 Deletion of instruction "(Such annexes must always be filed)".

1.6 Section 9 – Nucleotide and amino acid sequences

The first paragraph (sub-section 9.1) now also refers to Rule 27a EPC, on which the relevant decision of the EPO President
dated 2 October 1998 is based.

1.7 Section 10 – Designation fees

The box next to the second paragraph in sub-section 10.2 (designation of fewer than seven countries) makes it clear that this
is a separate declaration. By crossing this box the applicant waives a communication under Rule 108(3) EPC for the
contracting states not indicated under 10.2.

(a) If he makes such a waiver, Rule 108(4) EPC applies, ie designation fees may still be validly paid within two months of
expiry of the time limit under Rule 107(1)(d) EPC, provided that within this period a surcharge is paid.

(b) If he does not make such a waiver, a loss of rights is notified to him in respect of those contracting states for which no
designation fees were paid within the time limit under Rule 107(1)(d) EPC. He then has two months as from that notification to
complete the omitted act and pay a surcharge (Rule 108(3) EPC, second sentence).

Footnotes 1 and 2 update the list of contracting states.

1.8 Section 11 – Extension of the European patent

It is now expressly stated that extension requests are deemed withdrawn if the fee is not paid in time.

Footnote 3 now also indicates when each extension agreement entered into force and (where the extension state has since
become a contracting state to the EPC) expired. The agreements only cover applications filed during the periods specified.

2. Layout and editorial amendments

2.1 Frames have been inserted for a receipt stamp and the address for correspondence.

2.2 Text frames now cover all three languages, giving applicants more room when completing the form.

2.3 Sections 4, 7 and 9 now include sub-sections numbered as per the Notes on Form 1200.

2.4 As in Form 1001, there is now space at the bottom of each page for the representative's (or applicant's) reference.

2.5 The footnotes for the contracting and extension states (see Sections 10 and 11) are now presented together as endnotes.

3. Notes on Form 1200

The revised Notes reflect the above amendments.




176
                                                                                                        Article 154 – OJ 2005, 226



                                                                                                                                                    Article 154
                                                                                                                                    Article 154 – OJ 2005, 226




PCT
Notice from the European Patent Office dated 1 March 2005
concerning the protest procedure under the PCT (lack of unity)

OJ 2005, 226
This Notice replaces the previous Notice published in OJ EPO 1992, 547.

1. Rules 40 and 68 PCT have been amended with effect from 1 April 2005. The effect of the amendments is that the
requirement to carry out a review of the justification for the invitation to pay additional fees under Article 17(3)(a) or Article
34(3)(a) PCT prior to requiring payment of a protest fee (Rule 40.2(e) and Rule 68.3(e) PCT) has been deleted.

2. Under Articles 154(3) and 155(3) EPC the boards of appeal at the EPO are responsible for deciding on protests against
payment of additional fees for international search or international preliminary examination subject to payment of a protest
fee, currently EUR 1 020. These Articles have been deleted from the EPC as revised in 2000 which however has not yet
entered into force.

3. Pending entry into force of the revised version of the EPC, where additional fees for international search or international
preliminary examination are paid under protest according to Rule 40.2(c) or Rule 68.3(c) PCT, the EPO will continue to
subject any invitation to pay such additional fees to an internal review, prior to submission of the protest to the board of
appeal. This review is in the nature of a service from the EPO and the previous procedure described in Rule 105(3) EPC is no
longer applicable. In order to allow the applicant to consider the result of the review the EPO will, by way of concession, not
require payment of the protest fee until one month after the date of notification of the review to the applicant.

4(a) If the result of the review is that the invitation was not justified, any additional fees for international search or international
preliminary examination paid will be refunded. If the applicant has already paid the protest fee this will also be refunded.

(b) If the result of the review is that the invitation was entirely justified, the applicant will be notified and will also be informed
that if he wishes to proceed to examination of the protest by the board of appeal he must pay the protest fee within one month
if he has not already done so.

(c) If the result of the review is that the invitation was justified only in part, the corresponding additional fees will be refunded.
If the applicant has already paid the protest fee, the protest will be referred to the board of appeal unless the applicant
indicates within one month from notification of the result of the review that he does not wish to continue the protest. If the
applicant has not already paid the protest fee, he will be informed that he must do so within one month of the date of the
notification of the result of the review if he wishes the protest to be referred to the board of appeal.

5. If the protest fee is duly paid the protest will be referred to the board of appeal for decision.

(a) If the board of appeal finds that the protest was entirely justified, the additional fees and the protest fee will be refunded.

(b) If the board of appeal finds that the protest was justified only in part, the corresponding additional fees will be refunded,
but not the protest fee.




                                                                                                                                   177
Article 154 – OJ 1979, 463



                                                                                                                          Article 154 – OJ 1979, 463




PCT
Agreement concluded on 16 August 1979 between
the President of the EPO and the
President of the NETHERLANDS PATENT OFFICE
on the procedure applicable to the performance
of international-type searches for the
NETHERLANDS PATENT OFFICE carried out by
the European Patent Office as International
Searching Authority under the PCT

OJ 1979, 463
International-type searches within the meaning of Article 15, paragraph 5, of the Patent Cooperation Treaty on Netherlands
patent applications will be carried out by the EPO according to the regulations set out in Article 14 of the Agreement between
WIPO and EPO under PCT, hereunder referred to as the Agreement and according to Article 22 I, paragraph 3, of the
Netherlands patent act.

The following detailed provisions are applicable:

1. General
1.1 Subject to limitations in number of international-type searches according to Article 14, paragraph 3, of the Agreement,
     the EPO carries out international-type searches on patent applications filed with the Netherlands Patent Office and
     where the applicant so requests according to Article 22 I, paragraph 3, of the Netherlands Patent Act, the EPO being
     specified according to Article 14, paragraph 1, of the Agreement for that purpose.

1.2 International-type searches on Netherlands patent applications are carried out by the EPO on behalf of the Netherlands
    Patent Office. Accordingly no direct communication shall take place between the applicant and the EPO.

1.3 The International-type searches will be carried out on patent applications filed in the Netherlands in the Dutch language
    (see amendment to Annex A of the Agreement published in the PCT-Gazette No. 4/1979, page 145, and in the Official
    Journal of the EPO No. 4/79, page 139).

2. Patent application, search and search report
2.1 Formal requirements
     The Netherlands Patent Office will examine whether the Netherlands patent application, on which an international-type
     search is made, meets the formal requirements of form valid for international applications (which in practice are not
     different from those for Netherlands patent applications).

2.2 Carrying out the international-type search
    In carrying out the international-type search, the EPO shall apply the Guidelines for International Search to be carried
    out under the Patent Cooperation Treaty (document PCT/INT/5), special reference to international-type searches being
    made in these Guidelines in Chapter III, paragraph 4.2, and Chapter X, paragraph 2.1(b).

      Chapter XI and consequently Chapter IV, paragraphs 1.4 and 1.6, and Chapter X, paragraph 5, of these Guidelines are
      not applicable for international-type searches. Therefore no consideration will be given to a possibly submitted extract
      nor to the title of the invention.

2.3 Exclusions from the international search
    Where the Netherlands patent application relates to subject-matter as set forth in Rule 39.1 of the Regulations under
    PCT and mentioned in Article 7 of the Agreement, or where it contains obscurities, inconsistencies or contradictions to
    the extent that it is not possible to arrive at a reasonable conclusion as to the scope of the claimed invention, these



178
                                                                                                    Article 154 – OJ 1979, 463




     subject-matters are excluded from the international-type search (see Chapter VIII of the Guidelines for International
     Search).

2.4 Unity of invention
    If the EPO, as International Searching Authority, considers that the Netherlands patent application does not comply with
    the requirement of unity of invention, it will inform the Netherlands Patent Office of the lack of unity of invention by a
    communication (form PCT/ISA/206) preceding the issue of the international-type search report. This communication will
    specify the reasons for which the Netherlands patent application does not comply with the requirements of unity of
    invention, identify the separate inventions and indicate that additional search fees must be paid for the inventions or
    group of inventions other that the one first mentioned in the claims (see Chapter VII of the Guidelines for International
    Search). The time limit within which the Netherlands Patent Office must react shall be 45 days from the date of the
    communication. After this time limit one single search report is drawn up for those parts of the Netherlands patent
    application which relate to the invention first mentioned in the claims and those parts of the application which relate to
    inventions in respect of which the Netherlands Patent Office has requested an additional search.

     The procedure concerning the protest as set forth in PCT Rule 40.2(c) will not be applicable.

2.5 International-type search report
    The international-type search report will be drawn up on form PCT/ISA/201(a), the possible declaration which takes the
    place of the international-type search report on form PCT/ISA/203. These forms, as well as form PCT/ISA/206 already
    mentioned in item 2.4, are established in the Dutch language. The search report will be accompanied by copies of all
    documents cited in the report; in the case of patent families, only a copy of the members of the family actually cited will
    be supplied.

3. Time limit for international-type search
The time limit for establishing the international-type search report or the declaration referred to in Article 17(2)(a) of the PCT
shall be the same as for establishing the search reports on Netherlands patent applications under Article 22 I, paragraphs 1
and 2, of the Netherlands patent act.

4. Fees
The manner of payment and the amount of the search fees and additional search fees which the Netherlands Patent Office
pays for international-type searches on Netherlands patent applications is the same as for searches on Netherlands patent
applications under Article 22 l, paragraphs 1, 2 and 9, of the Netherlands Patent Act. This is in accordance with Articles 13 to
16 of the Working Agreement between the Netherlands Patent Office and the IIB of 29 September 1977.

For the European Patent Office Munich
9 August 1979
J. B. van Benthem
President

For the Netherlands Patent Office
The Hague, 16 August 1979
J. Dekker
President




                                                                                                                             179
Article 154 – OJ 1981, 531



                                                                                                                              Article 154 – OJ 1981, 531




PCT
Administrative Agreement between the European Patent
Organisation and the BELGIAN INDUSTRIAL AND
COMMERCIAL PROPERTY OFFICE
on the implementation of PCT Rule 48.3(b)

OJ 1981, 531
On 26 November 1981, an Administrative Agreement between the European Patent Organisation and the Belgian industrial
and commercial property office on the implementation of PCT Rule 48.3(b) enters into force. That PCT rule concerns the
translation of the international application into English for the purposes of the international publication if the application was
filed in a language other than English, French, German, Japanese or Russian.

The conclusion of this Agreement has enabled the EPO to supplement Annex A, paragraph 1 to the Agreement of 11 April
1978 between WIPO and the EPO under the PCT by indicating that an international application which is filed with the Belgian
industrial and commercial property office as receiving Office may be filed in Dutch.

Therefore, as from 14 December 1981, nationals or residents of Belgium will be able to file international applications with the
Belgian Office as receiving Office in Dutch.

It should be noted that the inclusion of Dutch relates only to proceedings before the EPO as an International Searching
Authority: it does not therefore extend to proceedings before the EPO as an International Preliminary Examining Authority.

The Administrative Agreement between the EPO and the Belgian industrial and commercial property office on the
implementation of PCT Rule 48.3(b) is identical in substance to the agreement of 9 January 1979 on the same subject
between the EPO and the Netherlands Patent Office. The text of that agreement was published in full in OJ 4/1979, p. 138.

The agreement lays down the procedure applicable as between the Belgian industrial and commercial property office and
applicants, between applicants and the EPO and also between the Belgian Office and the EPO if the international application
is filed in Dutch with the Belgian Office, to ensure the English translation of the application reaches the EPO in good time,
bearing in mind the time limits provided for in PCT Rule 48.3(b).


                                                                                                                              Article 154 – OJ 1982, 323




PCT
Specification of the EPO as an
International Searching Authority by
the US PATENT AND TRADEMARK OFFICE

OJ 1982, 323
With effect from 1 October 1982 the Patent and Trademark Office of the United States of America (USPTO) has specified
the European Patent Office as an International Searching Authority in addition to the USPTO pursuant to Article 16(2) PCT.
International applicants who are US residents or nationals can therefore request that the international search on international
applications filed with the USPTO as Receiving Office as from 1 October 1982 be carried out by the EPO. Applicants using




180
                                                                                                               Article 154 – OJ 1987, 266




this option have to pay to the USPTO the equivalent of the EPO fee for the international search fixed by the Director General
of WIPO at US $ 710 (see Rule 16 PCT).

If the international search report has been drawn up by the EPO, no supplementary European search report will be drawn up
and no search fee charged in the regional phase before the EPO as designated Office (see Decision of the Administrative
Council of 21 December 1978, OJ 1/1979, p. 4).


                                                                                                                                      Article 154 – OJ 1987, 266




PCT
Withdrawal by the UNITED STATES OF AMERICA
of the reservation concerning Chapter II PCT
(International Preliminary Examination)

OJ 1987, 266
1.    On 1 April 1987, the United States of America notified1, under PCT Article 64(6)(b), the withdrawal of its declaration that
      it shall not be bound by the provisions of Chapter II of the PCT. Thus, the United States of America will become bound
      by Chapter II of the PCT on 1 July 1987.

      The United States Patent and Trademark Office (USPTO) specified the USPTO and the European Patent Office (EPO)
      as competent International Preliminary Examining Authorities (IPEA) for international applications filed with the USPTO,
      at the option of the applicant. However, the specification of the EPO as IPEA is subject to the following conditions:

      (a)     for a period of three years beginning 1 July 1987, the EPO will process each year no more than 500 demands for
              international preliminary examination based on international applications filed with the USPTO.
      (b)     A demand for international preliminary examination can only be made, if it is based on an international application
              filed with the USPTO for which the EPO acts or has acted as an International Searching Authority2.

2.    This notice sets out the procedures which will be introduced to monitor the number of demands for international
      preliminary examination received by the EPO and, in particular, to ensure that applicants filing the 501st and subsequent
      demands suffer no loss of rights.

2.1 The USPTO will accept any demands beyond the limit of 500 filed with the EPO by United States applicants.

2.2 The EPO will inform the USPTO on a regular basis of the cumulative total of demands received in a given year.
    Applicants will be able to telephone either the EPO (No. (089) 2399-2423) or the USPTO (No. (703) 557-2003) at any
    time to find out how much of the “quota” of 500 has been used up.

      On receipt of the 501st and further demands, the EPO will immediately inform the USPTO. The applicants will then be
      contacted by the USPTO for further processing of the demand. Moreover, the EPO will refund fees already paid by such
      applicants to the EPO; it will also indicate that only the USPTO is competent to receive the demands and to establish the
      international preliminary examination report and that the demand is being forwarded to the USPTO.

      The EPO will indicate the date of receipt of the demand on the demand and promptly forward it to the USPTO for further
      processing. The EPO will be considered to be the agent of the USPTO for the purposes of receiving and dating these
      demands.




1
     See PCT Gazette No. 09/1987, p. 1651.
2
     Article 3(2) of the Agreement between WIPO and the EPO under the PCT, OJ EPO 1985, 320. See also OJ EPO 1982, 323.




                                                                                                                                     181
Article 154 – OJ 1990, 443




2.3 Applicants are recommended to take notice of the Information for PCT Applicants concerning the procedure before the
    EPO as Preliminary Examining Authority published in OJ EPO 1986, 441.

      Furthermore, the attention of applicants is drawn to the requirement of the United States of America that the international
      preliminary examination report be translated into English by the International Bureau if it has been drawn up in another
      language. This must be considered when applicants pay the handling fee. For further details, see OJ EPO 1986, 441,
      item 6.


                                                                                                                             Article 154 – OJ 1990, 443




PCT
The EPO as International Searching Authority and
International Preliminary Examining Authority
(for the US PATENT AND TRADEMARK OFFICE)

OJ 1990, 443
From 1 July 1990 the EPO continues to act as IPEA in respect of international applications filed with the United States
Patent and Trademark Office for which the EPO has established an international search report. The limit of 500 international
applications per year accepted by the EPO no longer applies.


                                                                                                                             Article 154 – OJ 1985, 331




PCT
Specification of the EPO as an International Searching and
International Preliminary Examining Authority by the
JAPANESE PATENT OFFICE

OJ 1985, 331
1.    From 1 October 1985, international applications may be filed in English with the Japanese Patent Office as receiving
      Office.

2.    With effect from 1 October 1985, the Japanese Patent Office has specified the European Patent Office as an
      International Searching and Preliminary Examining Authority pursuant to Articles 16(2) and 32(2) of the PCT for 200
      international applications per year filed in English with the Japanese Patent Office as receiving Office.

3.    For up to 200 such applications per year, therefore, internationals who are Japanese nationals or resident in Japan can
      request as from 1 October 1985 that the international search can be carried out by the EPO. Applicants using this
      option have to pay, under the provisions applicable at the Japanese Patent Office as receiving Office, the Yen equivalent
      of the EPO fee for the international search established by the Director General of WIPO (cf. Rule 16 PCT), which
      currently stands at 179,000 yen.




182
                                                                                                   Article 154 – OJ 1990, 443




     If the international search report has been drawn up by the EPO, no supplementary European search report will be
     drawn up nor will a search fee be charged in the regional phase before the EPO as designated Office (see Decision of
     the Administrative Council of 21 December 1978, OJ 1/1979, p. 4).

4.   Furthermore, in the case of international applications for which the EPO acts or will have acted as International
     Searching Authority, applicants will be able to opt for the EPO to act as International Preliminary Examining Authority (cf.
     Article 3 (2) of the Agreement of 12 April 1978 between WIPO and the EPO under the PCT, as last revised on 28
     September 1984). In that case they have to pay the handling and preliminary examination fees referred to in Rules 57
     and 58 PCT direct to the EPO, in accordance with the fee provisions of the Office.

5.   The Japanese Patent Office will act as International Searching and Preliminary Examining Authority for any international
     applications filed in English with it as receiving Office over and above the limit of 200 per year.


                                                                                                                             Article 154 – OJ 1990, 443




PCT
The EPO as International Searching Authority and
International Preliminary Examining Authority
for the JAPANESE PATENT OFFICE)

OJ 1990, 443
From 1 July 1990 the EPO continues to act as International Searching Authority (ISA) in respect of international applications
filed in English with the Japanese Patent Office and as International Preliminary Examining Authority (IPEA) in respect of
any such application for which the EPO has established an international search report. The limit of 200 international
applications per year accepted by the EPO for international search and international preliminary examination no longer
applies.


                                                                                                                             Article 154 – OJ 1991, 124




PCT
Specification of the EPO as an
International Searching and International Preliminary
Examining Authority by the POLISH PATENT OFFICE

OJ 1991, 124
1.   On 25 December 1990 the Patent Cooperation Treaty (PCT) entered into force for Poland.
     Since that date nationals and residents of Poland have been able to file international applications under the PCT and all
     persons entitled to file international applications under Article 9 PCT may designate Poland.

2.   When depositing its instrument of accession to the PCT, Poland made the declaration provided for in Article 64(2)(a)(i)
     and ii).




                                                                                                                             183
Article 154 – OJ 2000, 446




      However, the Polish Patent Office has informed the International Bureau of WIPO that where it acts as an elected Office,
      the time limit of 30 months provided for in Article 39(1)(a) PCT applies to both payment of the national fee and the
      furnishing of a translation of the international application.

3.    The Polish Patent Office has specified the EPO as sole International Searching and Preliminary Examining Authority for
      all international applications filed with that Office.


                                                                                                                            Article 154 – OJ 2000, 446




Decision of the Administrative Council of 11 October 2000
concerning the reduction of the fees for the international
search and the preliminary examination carried out on
international applications in favour of nationals of certain
states

OJ 2000, 446
THE ADMINISTRATIVE COUNCIL OF THE EUROPEAN PATENT ORGANISATION,

Having regard to the European Patent Convention, and in particular Article 33, paragraph 2(d), thereof,

Having regard to the Rules relating to Fees,

On a proposal from the President of the European Patent Office,

HAS DECIDED AS FOLLOWS:

Article 1
The fees for the international search and the preliminary examination carried out on international applications under Article 2,
items 2 and 19, of the Rules relating to Fees shall be reduced by 75% if the application is filed by a natural person who is a
national and a resident of a state which is not a contracting state of the European Patent Convention and which fulfils the
requirements for the corresponding reduction of fees payable to the International Bureau of WIPO (decision of the PCT
Assembly, 25 September to 3 October 1995).

Article 2
The decisions of 15 December 1994 (OJ EPO 1995, 14) and 14 June 1996 (OJ EPO 1996, 396) shall be set aside.

Article 3
This decision shall enter into force on 1 November 2000 and shall apply to all international applications filed on or after that
date.

Done at Munich, 11 October 2000
For the Administrative Council
The Chairman
Roland GROSSENBACHER




184
                                                                                                    Article 155 – OJ 1979, 427



                                                                                                                                              Article 155
                                                                                                                              Article 155 – OJ 1979, 427




PCT
Decision of the President of the European Patent Office
of 11 October 1979, concerning the date on which
the preliminary examination fee is payable to the
European Patent Office as an
International Preliminary Examining Authority

OJ 1979, 427
Where the European Patent Office acts as an International Preliminary Examination Authority, the preliminary examination fee
shall be payable on the date on which the demand for international preliminary examination is submitted (Decision of 11
October 1979, based on Article 10(2)(a) and Article 150 of the EPC, the Agreement of 11 April 1978 between the WIPO and
the EPO concerning the PCT and Rule 58(1)(b) of the PCT).

N.B.: In accordance with Rule 58.2 of the PCT where the international preliminary examination fee is not paid within the
period of time prescribed by the International Preliminary Examining Authority, that Authority shall invite the applicant to pay
the fee within one month from the date of the invitation. If the applicant complies with the invitation within the prescribed time
limit, any sum of money paid as the preliminary examination fee shall be considered to have been paid by the due date. If the
applicant does not comply with the invitation within the prescribed time limit, the demand for international preliminary
examination shall be considered as not having been submitted.


                                                                                                                              Article 155 – OJ 1993, 103




Updating of the PCT request form (PCT/RO/101) (January 1993)
and the demand form for international preliminary examination
(PCT/IPEA/401) (January 1993)

OJ 1993, 103
The International Bureau has modified the above forms with effect from 1 January 1993 (see PCT Gazette No. 32/1992,
Section IV).

Applicants are requested to use the revised forms to avoid any error in the designation or election of States.

Forms may be obtained, free of charge, from the EPO in Munich, The Hague, Berlin and Vienna as well as from any other
PCT Receiving office.




                                                                                                                             185
Article 155 – OJ 1999, 747



                                                                                                                                                  Article 155 – OJ 1999, 747




Guide for applicants - part 2: PCT procedure before the EPO -
"euro-PCT"

- OJ 1999, 747 -
THIS TEXT IS REPRODUCED IN FULL UNDER ARTICLE 153 EPC.


                                                                                                                                                  Article 155 – OJ 2001, 539




PCT
Notice of the President of the European Patent Office dated
2 November 2001 concerning rationalisation of international
preliminary examination procedure at the EPO

OJ 2001, 539
I. Introduction

1. The unremitting increase in its PCT search and examination workload has prompted the EPO to rationalise its procedures
for international preliminary examination under Chapter II PCT with effect from 3 January 2002. Its objective is to avoid
using examining capacity unnecessarily on cases where applicants are more interested in prolonging the international phase
than in the outcome of preliminary examination, and to save it for core work in search and European substantive examination.
To that end, procedures will be streamlined and international preliminary examination focused on its core elements.

2. This rationalisation exercise is an interim measure, until the steps already taken or still pending in the current PCT reform1
become fully effective. The reform is intended both to ease the burden on those PCT authorities most affected and at the
same time ensure quality standards.

3. A central element in the streamlined procedure is that the result of the international search will serve as the basis for
international preliminary examination, without involving the substantive examiner again (procedure without detailed
substantive examination - see Section II below).

In addition, all the EPO's written opinions and preliminary examination reports (ie even when it is examining the application in
detail) will focus on the core aspects, namely novelty, inventive step and industrial applicability (see Section IV below).

II. Procedure without detailed substantive examination

Principles
4. International preliminary examination at the EPO presupposes that the EPO also performed the international search.
Introduction of BEST Office-wide means that the same examiner will carry out both search and substantive examination.
BEST examiners will therefore, even at the international search stage, take due account of the main requirements of
international preliminary examination under Article 33(1) PCT (novelty, inventive step, industrial applicability), reaching a
provisional judgment which will later be set down in the first written opinion and the preliminary examination report.




1
    See eg amended time limit for entering the European phase under Rule 107(1) EPC (OJ EPO 2001, 373), and decision of the Assembly of the PCT
    Union dated 4 October 2001 amending Article 22 PCT (PCT Newsletter 10/2001).




186
                                                                                                                   Article 155 – OJ 2001, 539




5. If an applicant files amendments and/or arguments, or expressly requests detailed preliminary examination (when filing the
demand or later), the international application will always be dealt with by the substantive examiner again. So the applicant
determines whether the result of the international search becomes the basis for rationalised international
preliminary examination, or whether a more detailed substantive examination is made.
These principles are illustrated below, using typical case types.

"XY cases"
6. If the international search report contains at least one X or Y document, and the applicant has neither filed amendments
under Article 19 or 34(2)(b) PCT nor expressly requested detailed preliminary examination, the international search report
becomes the basis for a negative written opinion without involving the substantive examiner again.
If this rationalised written opinion prompts no response under Rule 66.3 PCT, the EPO will draw up an international
preliminary examination report with the same content as that written opinion and refund two thirds of the preliminary
examination fee (see Section III below).

7. If the applicant responds to the rationalised written opinion under Rule 66.3 PCT by requesting detailed substantive
examination (see also point 5 above), the substantive examiner will exceptionally draw up a second opinion, unless in the
light of that examination he can issue a positive examination report direct.

"A cases"
8. If the international search report does not cite X or Y documents, and the applicant has neither filed amendments under
Article 19 or 34(2)(b) PCT nor expressly requested detailed preliminary examination, the EPO will issue a positive rationalised
examination report without involving the substantive examiner again and refund two thirds of the preliminary examination fee
(see Section III below).

III. Partial refund of the international preliminary examination fee

9. If the EPO has concluded the procedure under Chapter II PCT with a rationalised examination report, the EPO will, under
Article 10d RFees as valid from 3 January 20022, refund two thirds of the international preliminary examination fee at
the same time as it transmits the report.

10. The new system applies to all international applications on which the EPO draws up a rationalised international
preliminary examination report as from 3 January 2002.

IV. Discontinuation of the 50% reduction in the European examination fee

11. If an international application is pursued before the EPO as elected Office (Euro-PCT route) and the Office has refunded
two thirds of the international preliminary examination fee (see Section III above), the full European examination fee is
payable under Article 12(2), second sentence, RFees as valid from 3 January 20021. Thus applicants will benefit from the
50% reduction in the European examination fee only if the EPO has drawn up a detailed international preliminary
examination report on the Euro-PCT application.

V. Further rationalisation measures

12. In future, the time limits fixed by the EPO for filing amendments or arguments (Rule 66.2(d) PCT) will be at the lower limit
of the range allowed. Discussions with the applicant (Rule 66.6 PCT) will take place only after he has responded to the first
written opinion (and only by telephone). As a rule, only one single written opinion will be issued.

13. Detailed international preliminary examination at the EPO will in future focus on the claims defining the invention and the
main requirements under Article 33(1) PCT (novelty, inventive step and industrial applicability). Other requirements (such as
form, contents or clarity) under Article 34(2)(c)(ii) and Rule 66.2(a) PCT will be covered only if this is essential for preliminary
examination purposes. PCT Forms 408 (first written opinion) and 409 (preliminary examination report) will normally give no
information under Sections II (priority), VI (cited documents), VII (defects in the application) and VIII (comments on the
international application).

14. Lastly, the EPO will in future make full use of Article 34(4) PCT, performing no international preliminary examination in
such cases. The same applies to amendments, if the differences to the original application and the reasons for the
amendments have not been made sufficiently clear (see also Rule 66.8(a) PCT).

2
    Decision of the Administrative Council dated 18 October 2001 amending the Rules relating to Fees (OJ EPO 2001, 492).




                                                                                                                                         187
Article 155 – OJ 1997, 394



                                                                                                                             Article 155 – OJ 1997, 394




PCT
Spain to be bound by Chapter II of the PCT

OJ 1997, 394
1. Spain, the last PCT contracting state to maintain a reservation concerning PCT Chapter II (international preliminary
examination), will also become bound by the provisions thereof on 6 September 1997 following withdrawal of its declaration
under Article 64(1)(a) PCT.

2. As from this date and irrespective of whether the international application is filed before, on or after 6 September 1997

(a) nationals and residents of this state may submit demands for international preliminary examination of international
applications filed by them; and

(b) this state may be elected in a demand for international preliminary examination or in later elections submitted in respect of
any international application in which it is a designated state.

3. The competent International Preliminary Examining Authority (IPEA) for international applications filed with the Spanish
Patent and Trademark Office as receiving Office will be the EPO.

4. Furthermore, applicants are recommended to take note of the Information for PCT applicants concerning the procedure
before the EPO as an IPEA under PCT Chapter II, published in OJ EPO 1994, 681, which is still applicable as from page 685,
“Condition 3”.


                                                                                                                             Article 155 – OJ 2003, 383




Spanish Patent and Trademark Office as an International
Preliminary Examining Authority (IPEA)

OJ 2003, 383
As published in PCT Newsletter 5/2003, page 1, and in accordance with Article 9 of the Agreement between the Spanish
Patent and Trademark Office and the International Bureau of WIPO under the PCT, the Spanish Patent and Trademark Office
is ready to start functioning as an IPEA in respect of any international application filed on or after 1 June 2003 and for which
that Office is a competent International Preliminary Examining Authority.

Information on the fees payable to the Spanish Patent and Trademark Office in its capacity as IPEA is published on page 5 of
the above-mentioned PCT Newsletter as well as in PCT Gazette No. 20/2003 of 15 May 2003 (see also WIPO's homepage
"www.wipo.int/pct/en").




188
                                                                                                               Article 155 – OJ 1987, 266



                                                                                                                                      Article 155 – OJ 1987, 266




PCT
Withdrawal by the UNITED STATES OF AMERICA
of the reservation concerning Chapter II PCT
(International Preliminary Examination)

OJ 1987, 266
1.    On 1 April 1987, the United States of America notified1, under PCT Article 64(6)(b), the withdrawal of its declaration that
      it shall not be bound by the provisions of Chapter II of the PCT. Thus, the United States of America will become bound
      by Chapter II of the PCT on 1 July 1987.
      The United States Patent and Trademark Office (USPTO) specified the USPTO and the European Patent Office (EPO)
      as competent International Preliminary Examining Authorities (IPEA) for international applications filed with the USPTO,
      at the option of the applicant. However, the specification of the EPO as IPEA is subject to the following conditions:

      (a)     for a period of three years beginning 1 July 1987, the EPO will process each year no more than 500 demands for
              international preliminary examination based on international applications filed with the USPTO.
      (b)     A demand for international preliminary examination can only be made, if it is based on an international application
              filed with the USPTO for which the EPO acts or has acted as an International Searching Authority2.

2.    This notice sets out the procedures which will be introduced to monitor the number of demands for international
      preliminary examination received by the EPO and, in particular, to ensure that applicants filing the 501st and subsequent
      demands suffer no loss of rights.

2.1 The USPTO will accept any demands beyond the limit of 500 filed with the EPO by United States applicants.

2.2 The EPO will inform the USPTO on a regular basis of the cumulative total of demands received in a given year.
    Applicants will be able to telephone either the EPO (No. (089) 2399-2423) or the USPTO (No. (703) 557-2003) at any
    time to find out how much of the “quota” of 500 has been used up.

      On receipt of the 501st and further demands, the EPO will immediately inform the USPTO. The applicants will then be
      contacted by the USPTO for further processing of the demand. Moreover, the EPO will refund fees already paid by such
      applicants to the EPO; it will also indicate that only the USPTO is competent to receive the demands and to establish the
      international preliminary examination report and that the demand is being forwarded to the USPTO.
      The EPO will indicate the date of receipt of the demand on the demand and promptly forward it to the USPTO for further
      processing. The EPO will be considered to be the agent of the USPTO for the purposes of receiving and dating these
      demands.

2.3 Applicants are recommended to take notice of the Information for PCT Applicants concerning the procedure before the
    EPO as Preliminary Examining Authority published in OJ EPO 1986, 441.
    Furthermore, the attention of applicants is drawn to the requirement of the United States of America that the international
    preliminary examination report be translated into English by the International Bureau if it has been drawn up in another
    language. This must be considered when applicants pay the handling fee. For further details, see OJ EPO 1986, 441,
    item 6.




1
     See PCT Gazette No. 09/1987, p. 1651.
2
     Article 3(2) of the Agreement between WIPO and the EPO under the PCT, OJ EPO 1985, 320. See also OJ EPO 1982, 323.




                                                                                                                                     189
Article 155 – OJ 1990, 443



                                                                                                                              Article 155 – OJ 1990, 443




PCT
The EPO as International Searching Authority and
International Preliminary Examining Authority
(for the US PATENT AND TRADEMARK OFFICE)

OJ 1990, 443
From 1 July 1990 the EPO continues to act as IPEA in respect of international applications filed with the United States
Patent and Trademark Office for which the EPO has established an international search report. The limit of 500 international
applications per year accepted by the EPO no longer applies.


                                                                                                                              Article 155 – OJ 1985, 331




PCT
Specification of the EPO as an International Searching and
International Preliminary Examining Authority by the
JAPANESE PATENT OFFICE

OJ 1985, 331
1.    From 1 October 1985, international applications may be filed in English with the Japanese Patent Office as receiving
      Office.

2.    With effect from 1 October 1985, the Japanese Patent Office has specified the European Patent Office as an
      International Searching and Preliminary Examining Authority pursuant to Articles 16(2) and 32(2) of the PCT for 200
      international applications per year filed in English with the Japanese Patent Office as receiving Office.

3.    For up to 200 such applications per year, therefore, internationals who are Japanese nationals or resident in Japan can
      request as from 1 October 1985 that the international search can be carried out by the EPO. Applicants using this
      option have to pay, under the provisions applicable at the Japanese Patent Office as receiving Office, the Yen equivalent
      of the EPO fee for the international search established by the Director General of WIPO (cf. Rule 16 PCT), which
      currently stands at 179,000 yen.

      If the international search report has been drawn up by the EPO, no supplementary European search report will be
      drawn up nor will a search fee be charged in the regional phase before the EPO as designated Office (see Decision of
      the Administrative Council of 21 December 1978, OJ 1/1979, p. 4).

4.    Furthermore, in the case of international applications for which the EPO acts or will have acted as International
      Searching Authority, applicants will be able to opt for the EPO to act as International Preliminary Examining Authority (cf.
      Article 3 (2) of the Agreement of 12 April 1978 between WIPO and the EPO under the PCT, as last revised on
      28 September 1984). In that case they have to pay the handling and preliminary examination fees referred to in Rules 57
      and 58 PCT direct to the EPO, in accordance with the fee provisions of the Office.

5.    The Japanese Patent Office will act as International Searching and Preliminary Examining Authority for any international
      applications filed in English with it as receiving Office over and above the limit of 200 per year.




190
                                                                                                 Article 155 – OJ 1990, 443



                                                                                                                          Article 155 – OJ 1990, 443




PCT
The EPO as International Searching Authority and
International Preliminary Examining Authority
for the JAPANESE PATENT OFFICE)

OJ 1990, 443
From 1 July 1990 the EPO continues to act as International Searching Authority (ISA) in respect of international applications
filed in English with the Japanese Patent Office and as International Preliminary Examining Authority (IPEA) in respect of
any such application for which the EPO has established an international search report. The limit of 200 international
applications per year accepted by the EPO for international search and international preliminary examination no longer
applies.


                                                                                                                          Article 155 – OJ 1991, 124




PCT
Specification of the EPO as an
International Searching and International Preliminary
Examining Authority by the POLISH PATENT OFFICE

OJ 1991, 124
1.   On 25 December 1990 the Patent Cooperation Treaty (PCT) entered into force for Poland.
     Since that date nationals and residents of Poland have been able to file international applications under the PCT and all
     persons entitled to file international applications under Article 9 PCT may designate Poland.

2.   When depositing its instrument of accession to the PCT, Poland made the declaration provided for in Article 64(2)(a)(i)
     and (ii).
     However, the Polish Patent Office has informed the International Bureau of WIPO that where it acts as an elected Office,
     the time limit of 30 months provided for in Article 39(1)(a) PCT applies to both payment of the national fee and the
     furnishing of a translation of the international application.

3.   The Polish Patent Office has specified the EPO as sole International Searching and Preliminary Examining Authority for
     all international applications filed with that Office.




                                                                                                                          191
Article 156 – OJ 1999, 747



                                                                                Article 156
                                                                Article 156 – OJ 1999, 747




Guide for applicants - part 2: PCT procedure before the EPO -
"euro-PCT"

- OJ 1999, 747 -
THIS TEXT IS REPRODUCED IN FULL UNDER ARTICLE 153 EPC.


                                                                Article 156 – OJ 2003, 587




PCT
Notice dated 10 December 2003 concerning revised Form 1200

- OJ 2003, 587 -
THIS TEXT IS REPRODUCED IN FULL UNDER ARTICLE 153 EPC




192
                                                                                             Article 157(3) – OJ 2005, 422, OJ 2005, 546



                                                                                                                                                                               Article 157(3)
                                                                                                                                                 Article 157(3) – OJ 2005, 422, OJ 2005, 546




Decision of the Administrative Council of 10 June 2005
reducing the fee for the supplementary European search where
the international search report was drawn up by the Austrian
Patent Office, by the National Board of Patents and
Registration of Finland, by the Spanish Patent and Trademark
Office or by the Swedish Patent and Registration Office1 and
Decision of the Administrative Council of 27 October 2005
clarifying Article 2

OJ 2005, 422, OJ 2005, 546
THE ADMINISTRATIVE COUNCIL OF THE EUROPEAN PATENT ORGANISATION,
Having regard to the European Patent Convention and in particular Article 157, paragraph (3) b) and (4), thereof,
Having regard to the opinion of the Budget and Finance Committee,

HAS DECIDED AS FOLLOWS:

Article 1
The fee for a supplementary European search on an international application for which the international search report was
drawn up by the Austrian Patent Office, or in accordance with the Protocol on Centralisation by the National Board of Patents
and Registration of Finland, by the Spanish Patent and Trademark Office or by the Swedish Patent and Registration Office
shall be reduced by EUR 810.

Article 22
(1) This decision shall enter into force on 1 July 2005 and shall apply to international applications entering the European
phase

(a) which are filed from 1 April 2005 up to and including 30 June 2008 and for which the international search report was drawn
up by the National Board of Patents and Registration of Finland, and

(b) which are filed from 1 July 2005 up to and including 30 June 2008 and for which the international search report was drawn
by the Austrian Patent Office, by the Spanish Patent and Trademark Office or by the Swedish Patent and Registration Office.

(2) The decision of 21 December 1978 (OJ EPO 1979, 4, Corr. 50), in so far as it relates to international applications for which
the international search report was drawn up by the Swedish Patent and Registration Office, and the decisions of 17 May
1979 (OJ EPO 1979, 248), and of 9 June 1995 (OJ EPO 1995, 511) shall, in respect of international applications filed on or
after 1 July 2005, be rescinded.

Done at Munich, 10 June 2005

For the Administrative Council
The Chairman
Roland GROSSENBACHER




1
    See Notice from the President of the European Patent Office dated 1 July 2005 (OJ EPO 2005, 431 - Editor's comment: This decision has been
    replaced by decision of the President of the EPO dated 01.01.2006, OJ EPO 2006, 83).
2
    Clarified by decision of the Administrative Council of 27 October 2005 (OJ EPO 2005, 546).




                                                                                                                                                            193
Article 157(3) – OJ 2006, 13



                                                                                                                           Article 157(3) – OJ 2006, 13




Decision of the Administrative Council of 15 December 2005
adjusting the decision of 10 June 2005 (CA/D 3/05 as
formulated in CA/D 6/05 of 27 October 2005) reducing the fee
for the supplementary European search where the international
search report was drawn up by the Austrian Patent Office, by
the National Board of Patents and Registration of Finland, by
the Spanish Patent and Trademark Office or by the Swedish
Patent and Registration Office

OJ 2006, 13
THE ADMINISTRATIVE COUNCIL OF THE EUROPEAN PATENT ORGANISATION,
Having regard to the European Patent Convention, and in particular Article 157, paragraphs (3)(b) and (4), thereof,
Having regard to the decision of the Administrative Council of 15 December 2005 amending the Rules relating to Fees,
On a proposal from the President of the European Patent Office,
HAS DECIDED AS FOLLOWS:

Article 1
The fee for the supplementary European search on an international application governed by Administrative Council decision
CA/D 3/05 of 10 June 2005 as formulated in CA/D 6/05 of 27 October 2005 shall be reduced by EUR 845.

Article 2
This decision shall enter into force on 1 April 2006. The new amount under Article 1 of this decision shall apply where the fee
for a supplementary European search is paid on or after 1 April 2006.

Done at Munich, 15 December 2005

For the Administrative Council
The Chairman
Roland GROSSENBACHER




194
                                                                                                                 Article 157(3) – OJ 2006, 192



                                                                                                                                                   Article 157(3) – OJ 2006, 192




Notice from the European Patent Office dated 1 March 2006
concerning search and examination fees

OJ 2006, 192
On 1 April 2006 two Administrative Council decisions of 15 December 2005 enter into force:

- the fee adjustment (CA/D 4/05, OJ EPO 2006, 8), hereinafter referred to as "RFees 2006", and

- CA/D 15/05 (OJ EPO 2006, 13), adapting CA/D 3/05 of 10 June 2005 (OJ EPO 2005, 422) as formulated in CA/D 6/05 of
27 October 2005 (OJ EPO 2005, 546) to RFees 2006.1 The Notice dated 28 October 2005 concerning search and
examination fees (OJ EPO 2005, 577) is therefore republished here with the amounts of the fees updated to reflect RFees
2006.

The new amounts of the fees will be binding on payments made on or after 1 April 2006. If within six months of 1 April
2006 a fee is paid in due time but only in the amount due before 1 April 2006, it will be deemed to have been validly paid if the
deficit is made good within two months of an invitation to that effect from the European Patent Office.

The diagrams annexed to this Notice give an overview of standard cases.

1. Extended European search report for applications filed on or after 1 July 2005

Under Article 3(2) of the Administrative Council's decision of 9 December 2004 (OJ EPO 2005, 5), new Rule 44a EPC2
applies to European applications and international applications entering the European phase that are filed on or after 1 July
2005. For such applications, the European or supplementary European search report is accompanied by an opinion on
whether the application and the invention to which it relates seem to meet the requirements of the EPC.3

The procedure established by Rule 44a EPC specifically applies to:

- European patent applications filed on or after 1 July 2005, including

- divisional applications under Article 76 EPC filed on or after 1 July 2005 (even if the earlier application has a filing date prior
to 1 July 2005), and

- international applications filed on or after 1 July 2005 and subsequently entering the European phase.

Such applications are subject to the following fees:4

- The search fee for the European or supplementary European search under RFees 2006 is EUR 1 000 (but pursuant to
Council decisions taken under Article 157(3) EPC the fee for the supplementary European search is in certain cases not
payable or is reduced, see point 3 below).

- The examination fee under RFees 2006 is EUR 1 335, or EUR 1 490 in the cases referred to in point 3(a) below.

2. Applications filed before 1 July 2005

Extended European search reports are not drawn up for European patent applications filed before 1 July 2005. The same
applies to international applications filed before 1 July 2005, even if they enter the European phase on or after 1 July 2005.

1
    Decision of the Administrative Council of 15 December 2005 adjusting the decision of 10 June 2005 (CA/D 3/05 as formulated in CA/D 6/05 of 27
    October 2005) reducing the fee for the supplementary European search where the international search report was drawn up by the Austrian Patent
    Office, by the National Board of Patents and Registration of Finland, by the Spanish Patent and Trademark Office or by the Swedish Patent and
    Registration Office (OJ EPO 2006, 13).
2
    Rule 44a - Extended European search report
    (1) The European search report shall be accompanied by an opinion on whether the application and the invention to which it relates seem to meet the
    requirements of this Convention, unless a communication under Rule 51, paragraph 2 or paragraph 4, can be issued.
    (2) The opinion under paragraph 1 shall not be published together with the search report.
3
    As indicated in section II of the Notice from the EPO dated 1 July 2005 (OJ EPO 2005, 435, 437), an applicant who pays the examination fee before
    receiving the European search report and waives the communication under Article 96(1) EPC is sent a communication under Rule 51(2) or (4)
    EPC rather than an opinion under Rule 44a EPC, since a valid request for examination has already been made.
4
    In the special cases mentioned in footnote 3, under RFees 2006 the search fee amounts to EUR 1 000 and the examination fee to EUR 1 335.




                                                                                                                                                   195
Article 157(3) – OJ 2006, 192



                                                       5
The search fee for the supplementary European search under RFees 2006 is EUR 720 (but pursuant to Council decisions
taken under Article 157(3) EPC the fee for the supplementary European search is in certain cases not payable or is reduced,
see point 3 below).

The examination fee under RFees 2006 is EUR 1 490.

3. Supplementary European search report dispensed with or fee reduced

Under Article 157(2) EPC, a supplementary European search report is drawn up in respect of international applications
entering the European phase, and the search fee must be paid in respect of that report at the time of European phase entry.
Under Article 157(3) EPC, however, the Council may decide that the supplementary European search report is to be
dispensed with or that the fee is to be reduced. The situation under the Council decisions now in force pursuant to
Article 157(3) EPC is as follows:

(a) No supplementary European search report is drawn up in respect of an international application for which the EPO was
the International Searching Authority.6

Hence no search fee pursuant to Article 157(2)(b) EPC is payable.

The examination fee under RFees 2006 is EUR 1 490.7

(b) No supplementary European search report is drawn up in respect of an international application

- which was filed before 1 July 2005

- and for which

the Austrian Patent Office,

the Spanish Patent and Trademark Office or

the Swedish Patent and Registration Office

was the International Searching Authority.

Hence no search fee pursuant to Article 157(2)(b) EPC is payable.8

The examination fee under RFees 2006 is EUR 1 490.9

(c) A supplementary European search report including an opinion pursuant to Rule 44a EPC is drawn up in respect of an
international application

- which is filed from 1 July 2005 up to and including 30 June 2008

- and for which

the Austrian Patent Office,

the National Board of Patents and Registration of Finland,

the Spanish Patent and Trademark Office or

the Swedish Patent and Registration Office

was the International Searching Authority.

5
    In the case of European applications filed before 1 July 2005 the time limit for the payment of the fee for the European search (Article 78(2) EPC) will
    already have expired at 1 April 2006.
6
    Council decision of 21 December 1978 (OJ EPO 1979, 4, Corr. 50) in conjunction with the Council decision of 10 June 2005 (OJ EPO 2005, 422), the
    latter in the wording of the Council decision of 27 October 2005 (OJ EPO 2005, 546).
7
    For international applications filed before 1 July 2005 point 2 above applies. For international applications filed on or after 1 July 2005 in respect of
    which the EPO acted as ISA, the higher examination fee is payable because no supplementary European search report is drawn up.
8
    Council decisions of 21 December 1978 (OJ EPO 1979, 4, Corr. 50), 17 May 1979 (OJ EPO 1979, 248) and 9 June 1995 (OJ EPO 1995, 511).
9
    Point 2 above applies.




196
                                                                                                                        Article 157(3) – OJ 2006, 192




The fee for the supplementary search is reduced by EUR 845                             and thus amounts to EUR 155.
                                                                                  10



The examination fee under RFees 2006 is EUR 1 335.

(d) A supplementary European search report without an opinion pursuant to Rule 44a EPC is drawn up in respect of an
international application which was filed from 1 April 2005 up to and including 30 June 2005 and for which the National
Board of Patents and Registration of Finland was the International Searching Authority.

No fee is payable for the supplementary European search.11

The examination fee under RFees 2006 is EUR 1 490.12

(e) The fee for the supplementary European search is reduced if the United States Patent and Trademark Office (USPTO),
the Japan Patent Office, the Federal Service for Intellectual Property, Patents and Trademarks (Russian Federation),
the Australian Patent Office, the State Intellectual Property Office of the People's Republic of China (SIPO) or the
Korean Intellectual Property Office was the International Searching Authority.

- If the international application was filed before 1 July 2005, the fee for the supplementary European search is reduced by
20%13 and thus amounts to 80% of EUR 720, ie EUR 576. The examination fee is EUR 1 490.

- If the international application was filed on or after 1 July 2005, the fee for the supplementary European search is reduced
by EUR 19014 and thus amounts to EUR 1 000 minus EUR 190, ie EUR 810. The examination fee under RFees 2006 is
EUR 1 335.

(f) At present there is no Council decision reducing the fee for the supplementary European search if the Canadian
Intellectual Property Office was the International Searching Authority.

- If the international application was filed before 1 July 2005, the fee for the supplementary European search under RFees
2006 is EUR 720. The examination fee is EUR 1 490.

- If the international application was filed on or after 1 July 2005, the fee for the supplementary European search is EUR 1
000. The examination fee is EUR 1 335.

4. Reduction of the examination fee under Rule 107(2) EPC

Under Rule 107(2) EPC and Article 12(2), first sentence, RFees the examination fee is reduced by 50% if the EPO has drawn
up an international preliminary examination report (IPER) pursuant to Rule 70 PCT.15 If the IPER was established on certain
parts of the international application in accordance with Article 34(3)(c) PCT, the reduction will be allowed only if the
examination is to be performed on the subject-matter covered by the IPER.

The examination fee payable under Rule 107(1)(f) EPC is as follows:

- for international applications filed before 1 July 2005, 50% of EUR 1 490, ie EUR 745

- for international applications filed on or after 1 July 2005, 50% of EUR 1 335, ie EUR 667.50 (see point 3(c) above), or 50%
of EUR 1 490, ie EUR 745 (see point 3(a) above).

5. Lack of unity


10
     Council decision of 10 June 2005 (OJ EPO 2005, 422) in the wording of the Council decision of 27 October 2005 (OJ EPO 2005, 546), as amended by
     Council decision of 15 December 2005 (see footnote 1).
11
     There is no Council decision dispensing with a supplementary European search report in cases where the National Board of Patents and Registration
     of Finland was the International Searching Authority. However, the reduction in the fee for the supplementary European search under the Council
     decision of 10 June 2005 (OJ EPO 2005, 422), which was adapted to RFees 2006 by the Council decision of 15 December 2005 (see footnote 1), also
     applies to the international applications referred to in point 3(d). Reducing the search fee for applications filed before 1 July 2005 by an amount greater
     than the fee itself means that there is no charge.
12
     Point 2 above applies.
13
     Council decisions of 14 September 1979 (OJ EPO 1979, 368), 11 December 1980 (OJ EPO 1981, 5), 9 December 1993 (OJ EPO 1994, 6) and 8 June
     2000 (OJ EPO 2000, 321).
14
     Council decision of 27 October 2005 (OJ EPO 2005, 548)
15
     For international applications filed before 1 January 2004 and subject to the rationalised international preliminary examination procedure
     described in the Notice from the President of the EPO of 2 November 2001 (OJ EPO 2001, 539 ff), this reduction in the examination fee is granted only
     if a detailed preliminary examination report is drawn up (see Article 12(2), second sentence, RFees). The EPO has discontinued the rationalised
     international preliminary examination procedure for international applications filed on or after 1 January 2004 (see OJ EPO 2004, 305).




                                                                                                                                                           197
Article 157(3) – OJ 2005, 548




In cases of lack of unity, the amount of the search fee for each further invention is

- EUR 720 if the application was filed before 1 July 2005

- EUR 1 000 if the application was filed on or after 1 July 2005.


                                                                                                                              Article 157(3) – OJ 2005, 548




Decision of the Administrative Council of 27 October 2005
concerning cases where the search fee for the supplementary
European search is to be reduced

OJ 2005, 548
THE ADMINISTRATIVE COUNCIL OF THE EUROPEAN PATENT ORGANISATION,
Having regard to the European Patent Convention, and in particular Article 157, paragraphs 3(b) and 4, thereof,
On a proposal from the President of the European Patent Office,
Having regard to the opinion of the Budget and Finance Committee,
HAS DECIDED AS FOLLOWS:

Article 1
The search fee for a supplementary European search on an international application for which the international search report
is drawn up by the United States Patent and Trademark Office, the Japanese Patent Office, the Korean Intellectual Property
Office, the Chinese Intellectual Property Office, the Federal Service for Intellectual Property, Patents and Trademarks
(Russian Federation) or the Australian Patent Office shall be reduced by EUR 190.

Article 2
This decision shall enter into force on 27 October 2005. It shall apply to all international applications filed on or after 1 July
2005.

The decisions of 14 September 1979 (OJ EPO 1979, 368), 11 December 1980 (OJ EPO 1981, 5), 9 December 1993 (OJ
EPO 1994, 6) and 8 June 2000 (OJ EPO 2000, 321) are rescinded in respect of all international applications filed on or after
1 July 2005.

Done at Munich, 27 October 2005

For the Administrative Council
The Chairman
Roland GROSSENBACHER




198
                                                                                                                   Article 157(3) – OJ 2005, 577



                                                                                                                                                      Article 157(3) – OJ 2005, 577




Notice from the European Patent Office dated 28 October 2005
concerning search and examination fees

OJ 2005, 577
In response to queries from European patent system users, and in the light of the Administrative Council's decision of
27 October 2005 clarifying Article 2 of the decision of 10 June 2005 (CA/D 3/05, OJ EPO 2005, 422),1 the EPO here provides
a detailed account of the legal situation with regard to the fees for European and supplementary European searches and for
examination.

The diagrams annexed to this Notice give an overview of standard cases.

1. Extended European search report for applications filed on or after 1 July 2005

Under Article 3(2) of the Administrative Council's decision of 9 December 2004 (OJ EPO 2005, 5), new Rule 44a EPC2
applies to European applications and international applications entering the European phase that are filed on or after 1 July
2005. For such applications, the European or supplementary European search report is accompanied by an opinion on
whether the application and the invention to which it relates seem to meet the requirements of the EPC.3

The procedure established by Rule 44a EPC specifically applies to:

- European patent applications filed on or after 1 July 2005, including

- divisional applications under Article 76 EPC filed on or after 1 July 2005 (even if the earlier application has a filing date prior
to 1 July 2005), and

- international applications filed on or after 1 July 2005 and subsequently entering the European phase.

Such applications are subject to the following fees (see Article 3(3) of the Council's decision of 9 December 2004, OJ EPO
2005, 5):4

- The search fee for the European or supplementary European search is EUR 960 (but pursuant to Council decisions taken
under Article 157(3) EPC the fee for the supplementary European search is in certain cases not payable or is reduced, see
point 3 below).

- The examination fee is EUR 1 280, or EUR 1 430 in the cases referred to in point 3(a) below.

2. Applications filed before 1 July 2005

Extended European search reports are not drawn up for European patent applications filed before 1 July 2005. The same
applies to international applications filed before 1 July 2005, even if they enter the European phase on or after 1 July 2005.

The search fee for the European or supplementary European search is EUR 690 (but pursuant to Council decisions taken
under Article 157(3) EPC the fee for the supplementary European search is in certain cases not payable or is reduced, see
point 3 below).

The examination fee is EUR 1 430.

3. Supplementary European search report dispensed with or fee reduced

1
    Decision of the Administrative Council of 27 October 2005 clarifying Article 2 of CA/D 3/05 on reducing the fee for the supplementary European search
    where the international search report was drawn up by the Austrian Patent Office, by the National Board of Patents and Registration of Finland, by the
    Spanish Patent and Trademark Office or by the Swedish Patent and Registration Office, OJ EPO 2005, 546.
2
    Rule 44a - Extended European search report
    (1) The European search report shall be accompanied by an opinion on whether the application and the invention to which it relates seem to meet the
    requirements of this Convention, unless a communication under Rule 51, paragraph 2 or paragraph 4, can be issued.
    (2) The opinion under paragraph 1 shall not be published together with the search report.
3
    As indicated in section II of the Notice from the EPO dated 1 July 2005 (OJ EPO 2005, 435, 437), an applicant who pays the examination fee before
    receiving the European search report and waives the communication under Article 96(1) EPC is sent a communication under Rule 51(2) or (4)
    EPC rather than an opinion under Rule 44a EPC, since a valid request for examination has already been made.
4
    In the special cases mentioned in footnote 3 the search fee amounts to EUR 960 and the examination fee to EUR 1 280.




                                                                                                                                                      199
Article 157(3) – OJ 2005, 577




Under Article 157(2) EPC, a supplementary European search report is drawn up in respect of international applications
entering the European-phase, and the search fee must be paid in respect of that report at the time of European phase entry.
Under Article 157(3) EPC, however, the Council may decide that the supplementary European search report is to be
dispensed with or that the fee is to be reduced. The situation under the Council decisions now in force pursuant to
Article 157(3) EPC is as follows:

(a) No supplementary European search report is drawn up in respect of an international application for which the EPO was
the International Searching Authority.5

Hence no search fee pursuant to Article 157(2)(b) EPC is payable.

The examination fee is EUR 1 430.6

(b) No supplementary European search report is drawn up in respect of an international application

- which was filed before 1 July 2005

- and for which

the Austrian Patent Office,

the Spanish Patent and Trademark Office or

the Swedish Patent and Registration Office

was the International Searching Authority.

Hence no search fee pursuant to Article 157(2)(b) EPC is payable.7

The examination fee is EUR 1 430.8

(c) A supplementary European search report including an opinion pursuant to Rule 44a EPC is drawn up in respect of an
international application

- which is filed from 1 July 2005 up to and including 30 June 2008

- and for which

the Austrian Patent Office,

the National Board of Patents and Registration of Finland,

the Spanish Patent and Trademark Office or

the Swedish Patent and Registration Office

was the International Searching Authority.

The fee for the supplementary search is reduced by EUR 8109 and thus amounts to EUR 150.

The examination fee is EUR 1 280.

(d) A supplementary European search report without an opinion pursuant to Rule 44a EPC is drawn up in respect of an
international application which was filed from 1 April 2005 up to and including 30 June 2005 and for which the National
Board of Patents and Registration of Finland was the International Searching Authority.


5
    Council decision of 21 December 1978 (OJ EPO 1979, 4, Corr. 50) in conjunction with the Council decision of 10 June 2005 (OJ EPO 2005, 422), the
    latter in the wording of the Council decision of 27 October 2005 (OJ EPO 2005, 546).
6
    For international applications filed before 1 July 2005 point 2 above applies. For international applications filed on or after 1 July 2005 in respect of
    which the EPO acted as ISA, the higher examination fee is payable because no supplementary European search report is drawn up.
7
    Council decisions of 21 December 1978 (OJ EPO 1979, 4, Corr. 50), 17 May 1979 (OJ EPO 1979, 248) and 9 June 1995 (OJ EPO 1995, 511).
8
    Point 2 above applies.
9
    Council decision of 10 June 2005 (OJ EPO 2005, 422) in the wording of the Council decision of 27 October 2005 (OJ EPO 2005, 546).




200
                                                                                                                   Article 157(3) – OJ 2005, 577



                                                                          10
No fee is payable for the supplementary European search.

The examination fee is EUR 1 430.11

(e) The fee for the supplementary European search is reduced if the United States Patent and Trademark Office (USPTO),
the Japan Patent Office, the Federal Service for Intellectual Property, Patents and Trademarks (Russian Federation),
the Australian Patent Office, the State Intellectual Property Office of the People's Republic of China (SIPO) or the
Korean Intellectual Property Office was the International Searching Authority.

- If the international application was filed before 1 July 2005, the fee for the supplementary European search is reduced by
20%12 and thus amounts to 80% of EUR 690, ie EUR 552. The examination fee is EUR 1 430.

- If the international application was filed on or after 1 July 2005, the fee for the supplementary European search is reduced
by EUR 19013 and thus amounts to EUR 960 minus EUR 190, ie EUR 770. The examination fee is EUR 1 280.

(f) At present there is no Council decision reducing the fee for the supplementary European search if the Canadian
Intellectual Property Office was the International Searching Authority.

- If the international application was filed before 1 July 2005, the fee for the supplementary European search is EUR 690.
The examination fee is EUR 1 430.

- If the international application was filed on or after 1 July 2005, the fee for the supplementary European search is
EUR 960. The examination fee is EUR 1 280.

4. Reduction of the examination fee under Rule 107(2) EPC

Under Rule 107(2) EPC and Article 12(2), first sentence, RFees the examination fee is reduced by 50% if the EPO has drawn
up an international preliminary examination report (IPER) pursuant to Rule 70 PCT.14 If the IPER was established on certain
parts of the international application in accordance with Article 34(3)(c) PCT, the reduction will be allowed only if the
examination is to be performed on the subject-matter covered by the IPER.

The examination fee payable under Rule 107(1)(f) EPC is as follows:

- for international applications filed before 1 July 2005, 50% of EUR 1 430, ie EUR 715

- for international applications filed on or after 1 July 2005, 50% of EUR 1 280, ie EUR 640 (see point 3(c) above), or 50% of
EUR 1 430, ie EUR 715 (see point 3(a) above).

5. Lack of unity

In the cases referred to in Rules 46 and 112 EPC, the amount of the search fee for each further invention is

- EUR 690 if the application was filed before 1 July 2005

- EUR 960 if the application was filed on or after 1 July 2005.


Annex to the Notice from the European Patent Office dated 28 October 2005 concerning search and examination fees

The diagrams on the following pages provide an overview of standard cases for the payment of search and examination fees.
They are for use in conjunction with the detailed explanations given in the Notice, to which reference is made in the footnotes
to the diagrams (see below).
10
     There is no Council decision dispensing with a supplementary European search report in cases where the National Board of Patents and Registration
     of Finland was the International Searching Authority. However, the EUR 810 reduction in the fee for the supplementary European search under the
     Council decision of 10 June 2005 (OJ EPO 2005, 422) also applies to the international applications referred to in point 3(d). Reducing the EUR 690
     search fee for applications filed before 1 July 2005 by an amount greater than the fee itself means that there is no charge.
11
     Point 2 above applies.
12
     Council decisions of 14 September 1979 (OJ EPO 1979, 368), 11 December 1980 (OJ EPO 1981, 5), 9 December 1993 (OJ EPO 1994, 6) and 8 June
     2000 (OJ EPO 2000, 321).
13
     Council decision of 27 October 2005 (OJ EPO 2005, 548)
14
     For international applications filed before 1 January 2004 and subject to the rationalised international preliminary examination procedure
     described in the Notice from the President of the EPO of 2 November 2001 (OJ EPO 2001, 539 ff), this reduction in the examination fee is granted only
     if a detailed preliminary examination report is drawn up (see Article 12(2), second sentence, RFees). The EPO has discontinued the rationalised
     international preliminary examination procedure for international applications filed on or after 1 January 2004 (see OJ EPO 2004, 305).




                                                                                                                                                     201
Article 157(3) – OJ 2005, 577




  Annex to the Notice from the European Patent
 Office dated 1 March 2006 concerning search and
 examination fees


  The diagrams on the following pages provide an
  overview of standard cases for the payment of
  search and examination fees. They are for use in
  conjunction with the detailed explanations given
  in the Notice, to which reference is made in the
  footnotes to the diagrams (see below).




 ___________
 1
     Cf. Notice, point 2.
 2
     Cf. Notice, point 1.
 3
  With opinion under Rule 44a(1) EPC, cf. Notice, point 1,
  unless communication under Rule 51(2) or (4) EPC can
  be issued, cf. Notice, footnotes 2, 3.
 4
     Cf. Notice, points 2, 3(a), (b).
 5
     Cf. Notice, footnote 15.
 6
     Cf. Notice, point 4.
 7
     Cf. Notice, points 2, 3(d).
 8
     Cf. Notice, points 2, 3(e).
 9
     Cf. Notice, points 2, 3(f).
 10
      Cf. Notice, points 1, 3(a).
 11
      Cf. Notice, points 1, 3(c).
 12
      Cf. Notice, points 1, 3(e).
 13
      Cf. Notice, points 1, 3(f).




            •                             •    Abbreviations
            •    AT                       •    Austrian Patent Office
            •    AU                       •    Australian Patent Office
            •    CA                       •    Canadian Intellectual Property Office
            •    CN                       •    State Intellectual Property Office of the People's
                                               Republic of China (SIPO)
            •    EPA/EPO/OEB              •    European Patent Office
            •    ES                       •    Spanish Patent and Trademark Office
            •    FI                       •    National Board of Patents and Registration of
                                               Finland
            •    IPER                     •    International Preliminary Examination Report
            •    ISA                      •    International Searching Authority

            •    JP                       •    Japan Patent Office
            •    KR                       •    Korean Intellectual Property Office
            •    RU                       •    Federal Service for Intellectual Property, Patents
                                               and Trademarks (Russian Federation)
            •    SE                       •    Swedish Patent and Registration Office
            •    US                       •    United States Patent and Trademark Office
                                               (USPTO)



202
Article 157(3) – OJ 2005, 577   Article 157(3) – OJ 2005, 577




                                                          203
Article 157(3) – OJ 2005, 435



                                                                                                                                Article 157(3) – OJ 2005, 435




Notice from the European Patent Office dated 1 July 2005
concerning new Rule 44a EPC (introduction of the extended
European search report), amendments to Articles 2 and 10
RFees and reduction of the search fee for supplementary
European search reports under Article 157(3)(b) EPC

OJ 2005, 435
THIS TEXT IS REPRODUCED IN FULL UNDER RULE 44a EPC


                                                                                                                                Article 157(3) – OJ 1994, 691




PCT
Fee reduction by certain designated/elected Offices where the
EPO
has acted as ISA or IPEA1

OJ 1994, 691
The European Patent Office has recently been notified that the Chinese Patent Office will allow a 20% reduction of the
examination fee where an international search report has been drawn up by the EPO. Below is a summary of those Offices
which allow a reduction of the fees payable in respect of international applications entering the national/regional phase under
Article 22 PCT or Article 39 PCT where the EPO has acted as ISA or IPEA.

1. EPO
No supplementary search is performed and no search fee is payable when the EPO, the Austrian Patent Office or the
Swedish Patent Office has acted as ISA.

A supplementary European search is performed at a 20% reduction as against the normal European search fee, where an
international search report has been drawn up by the Australian Patent Office, the Chinese Patent Office, the Japanese
Patent Office, the Russian Patent Office or the United States Patent and Trademark Office.

The examination fee is reduced by 50% where an international preliminary examination report has been performed by the
EPO.

2. Japanese Patent Office
The Japanese Patent Office allows a reduction of the “fee for request for examination” where an international search report
from the EPO (or from any of the other ISA’s) is available. The reduced fee is currently JPY674002 plus JPYen 22002 per
claim, i.e. approximately a 20% reduction against the full fee.

3. The United States Patent and Trademark Office
The United States Patent and Trademark Office allows a reduction of the basic national fee from USD 9502 to USD 8302
when an international search report has been drawn up by the EPO. A further 50% reduction is available for applications filed
by “small entities”. For the definition of small entity, see PCT Applicant’s Guide, Volume II, Annex US V.

1
    For details of fee reductions by the National Offices and the applicable conditions, see PCT Applicant’s Guide, Volume II
2
    Any changes are published in the PCT Gazette, part IV.




204
                                                                                          Article 157(3) – OJ 1994, 691



4. Chinese Patent Office
The Chinese Patent Office allows a 20% reduction of the examination fee where an international search report from the EPO
is available.




                                                                                                                     205
Article 158(2) – PCT Gazette 14/1986, 2367



                                                                                                                            Article 158(2) – PCT Gazette 14/1986, 2367




PCT
Notification under PCT Rule 49.1(abis)

PCT Gazette 14/1986, 2367
The International Bureau has received from the European Patent Office a notification under PCT Rule 49.1(abis). Under this
notification, the European Patent Office does not require the furnishing, under Article 22 of the PCT, by the applicant of a
copy of the international application (even though the communication of the copy of the international application by the
International Bureau under PCT Rule 47 has not taken place by the expiration of the applicable time limit under Article 22).
Pursuant to PCT Rule 76.5, this notification is also applicable to the furnishing of a copy of the international application under
Article 39(1) of the PCT.




206
                                                                                                   Article 163 – OJ 1978, 327



                                                                                                                             Article 163 – OJ 1978, 327




Decision of the Administrative Council of 6 July 1978
on the expiry of the transitional period provided
for in Article 163, paragraph 1, of the
European Patent Convention

OJ 1978, 327
THE ADMINISTRATIVE COUNCIL OF THE EUROPEAN PATENT ORGANISATION,
HAVING REGARD to the European Patent Convention and in particular Article 163, paragraph 1, thereof,
HAS DECIDED AS FOLLOWS:

Article 1
The transitional period provided for in Article 163,, paragraph 1, of the European Patent Convention shall expire four years
after the entry into force of the European Patent Convention, namely on 7 October 1981.

Article 2
This Decision shall enter into force on 6 July 1978. It shall be published in the Official Journal of the European Patent Office.

Done at Bordeaux, 6 July 1978.
For the Administrative Council
The Chairman
G. Vianès




                                                                                                                             207
Article 167 – OJ 1987, 426



                                                                                                                                                Article 167
                                                                                                                                Article 167 – OJ 1987, 426




Expiry of the reservations by Austria under Article 167 EPC

OJ 1987, 426
When depositing its instrument of ratification of the European Patent Convention on 27 February 1979 Austria made the
reservations provided for in Article 167(2)(a) and (d) EPC.

As a result of the reservation made under Article 167(2)(a) EPC in conjunction with 10(2) of the Introductory Law on Patent
Treaties, European patents may be revoked as regards Austria insofar as they confer protection on chemical, pharmaceutical
or food products for human consumption as such. The effect of the reservation under Article 167(2)(d) EPC is that Austria is
not bound by the Protocol on Recognition1.

Both reservations will cease to have effect after 7 October 1987 (Article 167(3), first sentence, and (6) EPC).

This means that a separate set of claims for Austria is no longer necessary for European patent applications designating that
country, which are filed from 8 October 1987 and by which protection is sought for chemical, pharmaceutical or food products
as such2.

In the case of European patents with effect in Austria granted on European patent applications filed before 8 October 1987
the effect of the reservation under Article 167(2)(a) EPC continues for the term of such patents (Article 167(5) EPC).

Impact on national law
The end of the term of the reservation by Austria under Article 167(2)(a) EPC also has implications for the general ban on
protection of substances applicable until now in Austria.

The general ban contained in Article IV of the Austrian Patents (Amendment) Act 19843 ceases to have effect on 8 October
1987. Simultaneously under Article VII(3) of the Act the provisions of the Austrian Patent Law enter into force, according to which
products, in particular substances or compositions, for use in a method for treatment of human beings by surgery or therapy or in
a diagnostic method practised on human beings are not excluded from patentability (Section 2, paragraph 2, second sentence, of
the Patent Law) and any substance or composition comprised in the state of the art is patentable if it is intended for use in one of
these methods, or in such a method for use on animals, and its application in one of these methods does not form part of the
state of the art (Section 3, paragraph 2, of the Patent Law).

Accordingly, from 8 October 1987 the Austrian Patents (Amendment) Act 1984 enters fully into force.




1
    See OJ EPO 1979, 289 and 1985, 145.
2
    See OJ EPO 1981, 68 and 1985, 145.
3
    See OJ EPO 1985, 116 Section II.1 and 2.




208
                                                                                                                            Article 167 – OJ 1992, 301



                                                                                                                                                             Article 167 – OJ 1992, 301




Notice of the President of the European Patent Office
dated 13 May 1992 concerning reservations entered
by Spain and Greece under Article 167 EPC

OJ 1992, 301
1. Present situation
When depositing their instruments of ratification or accession respectively, Greece and Spain entered reservations under
Article 167(2)(a) EPC1.

By virtue of the reservation entered by the Hellenic Republic, European patents are ineffective in Greece in so far as they
confer protection on pharmaceutical products as such.

By virtue of the reservation entered by the Kingdom of Spain, European patents are ineffective in Spain in so far as they
confer protection on chemical products as such or on pharmaceutical products as such.

The term of these reservations, which were due to expire on 7 October 1987, was extended by five years under
Article 167(3) EPC by Administrative Council decision of 5 December 19862.

2. Expiry of the reservations
They will thus cease to have effect after 7 October 1992 (Article 167(6) EPC), and from 8 October 1992 there will no longer
be any reservations in force in any of the Contracting States.
European patent applications designating Spain or Greece and filed from 8 October 1992 may therefore contain claims
relating to chemical or pharmaceutical products as such.
Under Article 167(5) EPC it is the filing date of the European patent application which is decisive, whether or not priority of a
previous application is claimed. The reservations entered by Spain and Greece therefore only apply to European patent
applications filed before 8 October 1992, and to European patents granted on the basis of such applications, their effect
continuing for the term of the patent concerned.3

3. Translation of claims covered by Spain’s reservation
For European patent applications and patents to enjoy provisional or definitive protection in Spain, a translation in Spanish of
the claims and patent specification respectively must be supplied (Articles 67 and 65 EPC - Articles 5 and 7 of Royal Decree
2424/1986 of 10 October 1986 on application of the EPC).

For European patent applications designating Spain, filed before 8 October 1992 (and European patents granted on the basis
of such applications) and containing claims covered by Spain’s reservation, the following arrangements have been agreed
between the Registro de la Propiedad Industrial (RPI) and the EPO.

In future, the RPI will publish the Spanish translations of such claims without requiring amendment or deletion. It will
however indicate them, with a note to the effect that they are covered by the reservation.

Applicants are therefore strongly advised to submit a separate set of claims when filing a European patent application
designating Spain, if this is necessary to avoid the publication of claims relating to chemical or pharmaceutical products as such.

This advice also applies to European patent applications designating Greece and containing claims relating to pharmaceutical
products as such.

The attention of applicants filing European patent applications containing claims covered by the reservations is also drawn to
the fact that they can submit a separate set of appropriate claims up to the time when, in response to the communication
under Rule 51(4) EPC (EPA/EPO/OEB Form 2004), they indicate approval of the text in which the Examining Division intends
to grant the European patent (see however Guidelines for Examination in the EPO, C-III, 8.3 and VI, 4.9).

The EPO always examines whether the separate sets of claims satisfy the requirements laid down in the EPC

1
    OJ EPO 1986, 199.
2
    OJ EPO 1987, 93.
3
    It should be noted, however, that in the event of litigation concerning the scope of the said reservations, it shall be for the competent national courts to
    decide.




                                                                                                                                                            209
210
II.
DECISIONS BASED ON RULES OF THE
IMPLEMENTING REGULATIONS OF THE EPC




                                      211
212
                                                           Rule 1(2) – OJ 1993, 540



                                                                                Rule 1(2) – OJ 1993, 540




Notice from the President of the European Patent Office dated
18 June 1993 concerning the language of correspondence with
the EPO as an International Authority under the PCT

- OJ 1993, 540 -
THIS TEXT IS REPRODUCED IN FULL UNDER ARTICLE 150(2) EPC




                                                                               213
Rule 2(1) – OJ 1995, 489



                                                                                                                          Rule 2(1) – OJ 1995, 489




Communication from the Vice-President, Directorate-General 3
of the European Patent Office, dated 19 May 1995 concerning
the obligation to give notice pursuant to Rule 2(1), first
sentence, EPC in proceedings before the boards of appeal (use
of an alternative official language in oral proceedings)

OJ 1995, 489
In oral proceedings before the European Patent Office a party may use one of the Office's other official languages in lieu of
the language of the proceedings provided that he gives notice in good time in accordance with Rule 2(1), first sentence, EPC
or makes provision for interpreting into the language of the proceedings.

In proceedings before the board of appeal this obligation to give notice also applies if the party has lawfully used an
alternative official language in oral proceedings before the department of first instance (see decision T 34/90, OJ EPO 1992,
454).




214
                                                          Rule 9(2) – OJ 1989, 177



                                                                               Rule 9(2) – OJ 1989, 177




Decision of the President of the European Patent Office
dated 10 March 1989 concerning the responsibilities of the
Legal Division

- OJ 1989, 177 -

Notice of the Vice-President, Directorate-General 5 of the
European Patent Office dated 5 July 1990 concerning
correspondence with the Legal Division

- OJ 1990, 404 -
THESE TEXTS ARE REPRODUCED IN FULL UNDER ARTICLE 20 EPC




                                                                              215
Rule 9(3) – OJ 1999, 504



                                                                                                                              Rule 9(3) – OJ 1999, 504




Notice from the Vice-President Directorate-General 2 of the
European Patent Office dated 28 April 1999 concerning the
entrustment to non-examining staff of certain duties normally
the responsibility of the examining or opposition divisions

OJ 1999, 504
This notice follows the notices of 15 June 1984 (OJ EPO 1984, 317 and 319) and 1 February 1989 (OJ EPO 1989, 178 and
179) which are revised as follows.

I. The notices concerning certain duties of the examining divisions shall read as follows:

1.-7. no change.

8. Decisions, and informing the person requesting the decision, under Rule 69(2) EPC.

9.-28. no change.

II. The notices concerning certain duties of the opposition divisions shall read as follows:

1.-3. no change.

4. Communications under Rule 69(1) and decisions, and informing the person requesting the decision, under Rule 69(2) EPC.

5.-23. no change.

24. deleted.

25.-26. no change.

These notices shall now read as follows:

I. Notice of the Vice-President of Directorate-General 2 of the EPO concerning the entrustment to formalities officers
of certain duties normally the responsibility of the examining divisions of the EPO, dated 28 April 1999

By virtue of the powers transferred to me by order of the President of the EPO of 6 March 1979, under Rule 9(3) EPC the
following provisions shall apply:

Within the framework of the responsibilities of the Examining divisions of the EPO, certain employees (formalities officers)
who are not technically or legally qualified examiners shall be entrusted with the following duties normally the responsibility of
the examining divisions:

1. Examination as to formal deficiencies under Article 91 EPC.

2. Examination of documents submitted under Rule 32(1) and (2), Rule 35(2) to (11) and (14) as well as Rule 36(2) to
(4) EPC in so far as this is not covered in number 1 above.

3. Examination under Rule 104b(1) and (2) EPC.

4. Examination of duly-made appointments of representatives and authorisations as well as communications under
Rule 101(4) EPC

5. Communications under Article 96(2) EPC in cases 1 to 4 referred to above.

6. Refusal of the European patent application in so far as this has to take place in cases 1 to 4 referred to above.

7. Communications concerning loss of rights under Rule 69(1) EPC.



216
                                                                                                                       Rule 9(3) – OJ 1999, 504




8. Decisions, and informing the person requesting the decision, under Rule 69(2) EPC

9. Examination and communications under Rule 51(4), (6) to (10) EPC; extension of time limits under Rule 51(4); issuing
decisions whereby European patents are granted (Rule 51(11) EPC).

10. Decisions on requests under Article 121 EPC in cases where

(a) the application is deemed withdrawn under Article 96(3) or Rule 51(8) EPC; or

(b) the application has been refused on grounds covered by points 6 or 21.

11. Decisions as to applications under Article 122(4) EPC where the application can be dealt with without further taking of
evidence under Rule 72 EPC.

12. Request to the applicant to comment on an application for inspection of files under Article 128(1) EPC.

13. Allowing inspection of files in cases covered by Article 128(2) to (4) EPC and provision of information from the files under
Rule 95 EPC.

14. Summons to oral proceedings under Rule 71(1) EPC following request by the examining division.

15. Summons to give evidence before the European Patent Office under Rule 72(2) EPC following request by the examining
division.

16. Decision concerning notification under Article 119 in conjunction with Rules 77 ff EPC and examination of proof of
notification.

17. Extension of a time limit under Rule 84 EPC.

18. Issue of a certificate for a European patent and issue of duplicate copies of the certificate under Rule 54 EPC.

19. Decision to consolidate a European patent application with a Euro-PCT application pursuant to Legal Advice No. 10/92
rev. (OJ EPO 1992, 662 - 670).

20. Correction of the designation of contracting states where the designation is withdrawn after a decision to grant a
European patent and before the decision takes effect.

21. Refusal of European patent applications under Article 97(1), Rule 51(5), first sentence, EPC.

22. Decisions to refund fees, with the exception of the European search fee and the fee for appeal. The decision to refund the
appeal fee shall be taken by the formalities officer where it is part of his duty to rectify the decision.

23. Decisions concerning the correction of errors in documents filed with the European Patent Office, with the exception of the
description, claims and drawings (Rule 88 EPC).

24. - deleted -

25. Decisions of the European Patent Office as designated Office under Article 25(2)(a) of the Cooperation Treaty
(Article 153(2) EPC).

26. Examination of an application for evidence to be taken under Rule 75(2)(a) and (b) and (3) EPC and notification that the
taking of evidence has been ordered.

27.1 Registering transfers and changes of name until such time when an adverse decision seems likely (Articles 71, 72 and
74, Rules 20 and 61 EPC; see OJ EPO 1987, 215).

28.1 Rectification of the designation of an inventor until such time when an adverse decision seems likely (Rule 19 EPC; cf.
OJ EPO 1987, 215, 226 points 6.3 and 6.4).


1
    See the Decision of the President of the EPO dated 10 March 1989 concerning the responsibilities of the Legal Division (OJ EPO 1989, 177, point
    1.2(d) and (e)).




                                                                                                                                                      217
Rule 9(3) – OJ 1999, 504




II. Notice of the Vice-President of Directorate-General 2 of the EPO concerning the entrustment to formalities officers
of certain duties normally the responsibility of the Opposition divisions of the EPO, dated 28 April 1999

By virtue of the powers transferred to me by order of the President of the EPO of 6 March 1979, under Rule 9(3) EPC the
following provisions shall apply:

Within the framework of the responsibilities of the opposition divisions of the EPO, certain employees (formalities officers)
who are not technically or legally qualified examiners shall be entrusted with the following duties normally the responsibility of
the examining divisions:

1. Examination as to formal deficiencies, under Rule 32(1) and Rule 32(2), Rule 35(2) to (11) and (14) and Rule 36(2) to
(5) EPC on the basis of Rule 61a EPC, of the notice of opposition, the amendments of the European patent made by the
proprietor and the documents filed.

2. Examination of duly-made appointments of representatives and authorisations as well as communications under
Rule 101(4) EPC.

3. Communication of documents to the parties and invitation to state observations or to file documents in routine cases or on
the instructions of the opposition division.

4. Communications under Rule 69(1) EPC and decisions, and informing the person requesting the decision, under
Rule 69(2) EPC

5. Communication to the opponent concerning deficiencies under Rule 56(1) and (2) EPC.

6. Decisions in ex parte proceedings on the inadmissibility of the opposition and the intervention of the assumed infringer with
the exception of the cases provided for in Rule 55(c) EPC.

7. Communications under Rule 58(4) and (5) EPC on the instructions of the opposition division and communications under
Rule 58(6) EPC (see OJ EPO 1989, 1).

8. Issue of a decision on the maintenance of the European patent as amended under Article 102(3) EPC.

9. Issue of a new certificate for a European patent as amended under Rule 62a EPC and issue of duplicate copies of the
certificate under Rule 54 EPC.

10. Revocation of the European patent in accordance with Article 102(4) EPC.

11. Revocation of the European patent in accordance with Article 102(5) EPC.

12. Decisions as to applications under Article 122(4) EPC when the application can be dealt with without further evidence
being taken under Rule 72 EPC.

13. Granting of inspection of files in cases covered by Article 128(2) to (4) EPC and provision of information contained in the
files under Rule 95 EPC.

14. Summons to oral proceedings under Rule 71(1) EPC following request by the opposition division.

15. Summons to give evidence before the European Patent Office under Rule 72(2) EPC following request by the opposition
division.

16. Notification as required under Article 119 in conjunction with Rule 77 ff EPC and examination of proof of notification.

17. Extension of time limits under Rule 84 EPC.

18. - deleted -

19. Decisions concerning discontinuance of the opposition proceedings in cases covered by Rule 60 EPC where such
proceedings are not continued by the opposition division of its own motion.

20. Decisions concerning the refund of fees, with the exception of the appeal fee.

21. Decisions concerning the correction of errors in documents filed with the European Patent Office with the exception of the
description, claims and drawings (Rule 88 EPC).

22. Examination of an application for evidence to be taken under Rule 75(2)(a), (b) and (3) EPC and notification that the
taking of evidence has been ordered.



218
                                                                                                                       Rule 9(3) – OJ 1999, 504




23. Revocation of a European patent during opposition proceedings in accordance with Legal Advice No. 11/1982
(OJ EPO 1982, 57/58) where the patent proprietor states that he no longer approves the text in which the patent was granted
and does not submit an amended text or where the proprietor requests that the patent be revoked.

24. - deleted -

25.2 Registering transfers and changes of name until such time when an adverse decision seems likely (Articles 71, 72 and
74, Rules 20 and 61 EPC; see OJ EPO 1987, 215).

26.1 Rectification of the designation of an inventor until such time when an adverse decision seems likely (Rule 19 EPC; see
OJ EPO 1987, 215, 226, points 6.3 and 6.4).

III. Delegation of such a duty to an employee who is not a technically or legally qualified examiner shall not affect the
competence of the examining or opposition division to take decisions itself.

M.F. VIVIAN
Vice-President




2
    See the Decision of the President of the EPO dated 10 March 1989 concerning the responsibilities of the Legal Division (OJ EPO 1989, 177, point
    1.2(d) and (e)).




                                                                                                                                                      219
Rule 10(2) – OJ 1985, 249



                                                          Rule 10(2) – OJ 1985, 249




Decision of the Presidential Council of the
Boards of Appeal dated 31 May 1985 concerning
the transfer of functions to the Registrars
of the Boards of Appeal

- OJ 1985, 249 as amended OJ 2002, 590 -
THIS TEXT IS REPRODUCED IN FULL UNDER ARTICLE 23(4) EPC




220
                                                                                                  Rule 17(3) – OJ 1991, 266



                                                                                                                           Rule 17(3) – OJ 1991, 266




Notice of the European Patent Office
dated 5 April 1991 concerning the possibility
of renouncing the Notification to the inventor
according to Rule 17(3) EPC

OJ 1991, 266
In practice, the information supplied to the inventor under Rule 17(3) EPC will cause the inventor to make enquiries with the
applicant, or his representative, when he is not clear about its significance.

In order to avoid this and also to reduce the substantial amount of work involved, attention is drawn to the possibility of
renouncing the notification to the inventor.

This renunciation must be by the inventor, addressed to the EPO in written form, and has to be filed with the designation of
inventor. It must contain the information to be supplied to the inventor by the EPO under Rule 17(3) EPC, i.e.:

(a) the number and date of filing of the European patent application, if known:

(b) where the priority of an earlier application is claimed, the date and State of the earlier application, and its number, if
    known;

(c)   the name of the applicant;

(d) the title of the invention;

(e) the Contracting States expressly designated in the Request for Grant form;

(f)   the name(s) of any co-inventor(s).

(cf. Article 128(5) EPC and Guidelines A-III, 5.3).
In this way the special safeguards for the inventor provided in the Convention are ensured. It also leads to a reduction of the
work involved by the inventors and their representatives and by the EPO.

Therefore attention is drawn to a more frequent use of that method.




                                                                                                                           221
Rule 24(1) – OJ 2004, 374



                                                                                                                                         Rule 24(1)
                                                                                                                          Rule 24(1) – OJ 2004, 374




Notice from the European Patent Office dated 26 May 2004
concerning the cancellation of telex numbers as from
1 September 2004

OJ 2004, 374
This notice follows on from the Notice from the European Patent Office dated 2 June 1992 (OJ EPO 1992, 306, 311, point
7.3) concerning the filing of patent applications and other documents.

For technical reasons, the following numbers will no longer be available for filing documents by telex from 1 September 2004:

Munich
Telex-No. 523 656 epmu d
The Hague
Telex-No. 31 651 epo nl
The following numbers will continue to be available for filing documents by fax:

Munich
Fax +49-89/2399-4465
The Hague
Fax +31-70/340-3016
Berlin
Fax +49-30/25901-840



                                                                                                                          Rule 24(1) – OJ 1999, 509




Notice dated 2 June 1999 concerning
correspondence with the Office via e-mail

OJ 1999, 509
Correspondence concerning pending proceedings (formalities examination, search, substantive examination, opposition,
appeal) should not be sent to the EPO via e-mail as the Office cannot then guarantee that it will be placed on file in time or
processed before the expiry of any relevant deadline.

In proceedings under the EPC or PCT, urgent queries or communications should therefore be sent by fax only, indicating the
application number and the stage reached in the proceedings (eg imminent expiry of a deadline or imminent oral
proceedings), to the EPO's central fax number in Munich (+49-89) 2399-4465).




222
                                                                                                 Rule 24(1) – OJ 2000, 458



                                                                                                                          Rule 24(1) – OJ 2000, 458




Notice dated 12 September 2000 concerning correspondence
with the Office via e-mail

OJ 2000, 458
The present notice supplements that published in EPO Official Journal No. 7/1999, 509.

Since September 1999, the EPO has gradually been providing its staff with e-mail facilities. At present, however, e-mail has
no legal force in proceedings under either the EPC or PCT (see also Guidelines A-IX, 2.5, and C-VI, 6), and thus cannot be
used validly to perform any procedural act and in particular to comply with time limits.

E-mail exchanges should therefore be confined to matters at present dealt with by telephone, such as arranging dates for
interviews. They should be initiated by EPO staff. Applicants are of course under no obligation to take up any such offer. The
EPO will take such steps as are necessary to ensure that any exchange of information is duly documented on the file.

Since the confidentiality guarantees required for international preliminary examination proceedings under the PCT cannot be
provided, information of a substantive nature should not be exchanged via e-mail in this context.

The Office again points out that it cannot guarantee that e-mail communications, especially those initiated by the applicant,
will be placed on file in time or processed before the expiry of any relevant deadline. Urgent queries or communications
should therefore be sent by fax only, to the EPO's central fax number in Munich [(+49-89) 2399-4465], indicating the
application number, the stage reached in the proceedings, and the reason why an EPO response is urgently required.


                                                                                                                          Rule 24(1) – OJ 2006, 610




Introduction of a central e-mail address for the whole Office

OJ 2006, 610
Since 1 December 2006, the Office has an official e-mail address for general enquiries: info@epo.org.

This central e-mail address is applicable for all EPO locations and is intended to improve the service offered by the Office.
The e-mail addresses already in use for individual departments within the Office will, however, continue to exist. E-mail
cannot be used to perform any procedural act (see OJ EPO 2000, 458).




                                                                                                                          223
Rule 24(1) – OJ 2002, 543



                                                                                                                               Rule 24(1) – OJ 2002, 543




Decision of the President of the European Patent Office dated
29 October 2002 on the electronic filing of patent applications
and other documents

OJ 2002, 543
The President of the European Patent Office (EPO),

having regard to Rule 24(1) and Rule 36(5) EPC and Rule 89bis.1 and 2 PCT,

has decided as follows:

Article 1
Filing of patent applications
(1) European patent applications and international (PCT) applications may be filed with the EPO in electronic form.

(2) European patent applications may also be filed in electronic form with the competent national authorities of those
contracting states which so permit.

(3) Electronic filing may be effected online or on electronic data carriers in accordance with the notice1 issued in connection
with the present decision.

Article 2
Filing of other documents
The EPO may decide that, after a European or international application has been filed, documents within the meaning of Rule
36 EPC or Rule 89bis.1 and 2 PCT may be filed in electronic form in accordance with the notice1 issued in connection with the
present decision

Article 3
Preparation of documents
The documents referred to in Articles 1 and 2 shall be prepared using the software provided free of charge by the EPO,
unless the use of other software is permitted.

Article 4
Illegible or incomplete documents; infected files
(1) Where a filed document is illegible or incomplete, that part of it which is illegible or incomplete shall be regarded as not
having been received.

(2) If a filed document is infected with a computer virus or contains other malicious software, it shall be deemed to be illegible.
The Office shall not be obliged to either open it or process it.

(3) Where a filed document is found to be deficient within the meaning of paragraphs 1 or 2, the sender, provided that he can
be identified, shall be notified promptly.

Article 5
Paper confirmation
No confirmation on paper is required for documents filed in accordance with Articles 1 and 2.

Article 6
Cancellation of previous decisions
The decision dated 7 December 2000 on the electronic filing of European patent applications and subsequent documents
(supplement to Official Journal 4/2001) shall cease to have effect when the present decision enters into force.




1
    OJ EPO 2002, 545.




224
                                                                                                                          Rule 24(1) – OJ 2002, 545



Article 7
Entry into force
This decision shall enter into force on 1 November 2002.
Done at Munich, 29 October 2002
Ingo KOBER
President


                                                                                                                                                Rule 24(1) – OJ 2002, 545




Notice dated 29 October 2002 concerning the electronic filing
of patent applications and other documents

OJ 2002, 545
The present notice is issued in connection with the decision of the President of the European Patent Office (EPO) dated
29 October 2002 on the electronic filing of patent applications and other documents.

1. Filing European and international patent applications and other documents

1.1 European patent applications may be filed in electronic form with the EPO or with the competent national authorities of the
contracting states which so permit.

1.2 International patent applications and other documents specified by the EPO within the meaning of Article 2 of the decision
of the President dated 29 October 2002 may also be filed in electronic form with the EPO.

1.3 The current addresses for Online Filing can be found on the EPO’s Website under epoline® (www.european-patent-
office.org/epoline)1.

2. Other documents

2.1 Other documents within the meaning of Article 2 of the Decision of the President dated 29 October 2002 which may
currently be filed in electronic form are the designation of the inventor, the authorisation, and the form for entry into the
European phase (Form 1200).

2.2 Where the filing of other documents in electronic form is permitted in future, this will be announced on the EPO Website
under epoline® (www.european-patent-office.org/epoline).

3. Form of the documents for European and international patent applications

3.1 Documents pertaining to European and international patent applications and filed in accordance with Articles 1 and 2 of
the Decision of the President dated 29 October 2002, including all drawings, should preferably be prepared using the software
issued by the EPO (epoline® Online Filing software).

3.2 Subject to prior approval by the EPO, other software may also be used, in particular for filing European patent
applications.

3.3 The Administrative Instructions under the PCT, Part 7 and Annex F2 apply to the filing of international applications and
other documents within the meaning of Rule 89bis PCT.

3.4 For applications containing a sequence listing, the provisions governing the filing of sequence listings3 are applied mutatis
mutandis.

1
    The current addresses for the online filing of European and international patent applications are: https://secure.epoline.org and
    https://securetemp.epoline.org.
2
    PCT Gazette - Special Issue, S-04/2001, dated 27 December 2001; see also http://www.wipo.int.




                                                                                                                                               225
Rule 24(1) – OJ 2002, 545




3.5 The technical documents relating to European and international patent applications may be attached in their original
format, provided that format is one of those listed on the EPO Website under epoline® (www.european-patent-
office.org/epoline)4. Technical documents may be attached in a different data format provided that the applicant informs the
EPO, when filing the application, where it can within reason acquire the corresponding software.

4. Signature

4.1 Where documents filed in accordance with Articles 1 and 2 of the Decision of the President of 29 October 2002 require
signature, the signature may take the form of a facsimile signature, a text string signature or an enhanced electronic
signature.

4.2 A facsimile signature is a facsimile reproduction of the signer’s signature.

4.3 A text string signature is a string of characters, preceded and followed by a forward slash (/), selected by the signatory to
provide evidence of his identity and of his intent to sign the message in question.

4.4 Enhanced electronic signatures are created using electronic PKI-based signatures either issued by the EPO or
recognised by it. A list of recognised electronic signatures can be found on the EPO Website under epoline® (www.european-
patent-office.org/epoline)5.

5. Filing on electronic data carriers

5.1 Documents to be filed in accordance with Articles 1 and 2 of the Decision of the President dated 29 October 2002 may be
filed on electronic data carriers using the epoline® Online Filing software. A list of admissible data carriers and data formats is
published on the EPO’s Website under epoline® (www.european-patent-office.org/epoline)6.

5.2 These documents must be accompanied by a paper document identifying the applicant and/or his representative,
indicating an address for correspondence and listing the files stored on the data carrier.

6. Encryption

Documents filed in accordance with Articles 1 and 2 of the Decision of the President dated 29 October 2002 must be wrapped
and encrypted using the software made available by the EPO.

7. Date of receipt of electronically filed patent applications

Electronically filed patent applications are accorded as the date of filing the date on which the application documents are
received by the EPO or the competent national authority, provided these documents satisfy the requirements of Article 80
EPC or Article 11(1) PCT.

8. Acknowledgment of receipt

8.1 The receipt of documents filed in accordance with Articles 1 and 2 of the Decision of the President dated 29 October 2002
is acknowledged electronically by the EPO or the competent national authority during the submission session.

8.2 Where the acknowledgment is not successfully transmitted, the EPO or national authority concerned will transmit it
without delay by other means, where the information at its disposal so permits.




3
     Supplement No. 2 to OJ EPO 11/1998.
4
     Data formats for pre-conversion files Word-processing programs:
Microsoft Word 97, 2000 and 2002
Corel WordPerfect 6.1, 8 and 10
Lotus WordPro 9.5 and 9.6
Programs which can be embedded in a word-processed text:
Microsoft Excel 97, 2000 and 2002
Microsoft Visio 97, 2000 and 2002
ISIS Draw V2.2
AutoCAD R14, 2000 and 2002
AutoCAD Lite 98 and 2002.
5
     The following electronic signatures are currently recognised: D-Trust https://www.d-trust.net/
VRK-FINSIGN http://www.vaestorekisterikeskus.fi/ CERES http://www.cert.fnmt.es/.
6
     Filing is currently permitted on CD-R conformant to ISO 9660.




226
                                                                                                                     Rule 24(1) – OJ 2004, 270




8.3 The acknowledgment includes the identity of the EPO or national authority concerned, the date and time of receipt, a
reference or application number allocated by the EPO or national authority, a list of the files transmitted and a message
digest, ie the message in compressed form.

8.4 Acknowledgment of receipt does not imply the accordance of a filing date.

9. Cancellation of previous notices

This notice replaces the notice dated 1 June 20027.


                                                                                                                                                 Rule 24(1) – OJ 2004, 270




Notice from the European Patent Office dated 19 March 2004
concerning the electronic filing of European patent
applications with the German Patent and Trade Mark Office
(DPMA)

OJ 2004, 270
The present notice is issued under Article 3 of the decision of the President of the European Patent Office (EPO) dated
29 October 2002 on the electronic filing of patent applications and other documents1 and further to point 3.2 of the notice of
the same date2.

1. Filing European patent applications using PaTrASINT software

1.1 As from 22 March 2004, European patent applications, including all drawings, may also be filed in electronic form with the
DPMA using the PaTrASINT software provided free of charge by the DPMA.

1.2 Users of PaTrASINT software must comply not only with the technical and legal requirements which apply when European
patent applications are filed electronically at the DPMA3 but also with the EPC's provisions and the EPO's rules governing the
filing of patent applications and other documents.

2. Electronic filing

2.1 Electronic filing may be effected online or on electronic data carriers.

2.2 The current address for filing European patent applications online with the DPMA using PaTrASINT software can be found
on the DPMA website4.

2.3 A list of the admissible data carriers and data formats is also published on the DPMA website.

2.4 If European patent applications are filed on electronic data carriers, they must be accompanied by a paper document
identifying the applicant and/or his representative, indicating an address for correspondence and listing the files stored on the
data carrier.




7
    OJ EPO 2002, 372.
1
    OJ EPO 2002, 543.
2
    OJ EPO 2002, 545.
3
    The current requirements are set out in the relevant German legislation: "Verordnung über den elektronischen Rechtsverkehr im gewerblichen
    Rechtsschutz" (ERvGewRV) dated 5 August 2003 (Federal Law Gazette I, 1558).
4
    The current address for filing European patent applications online with the DPMA using PaTrASINT software is: east@dpma-direkt.de.




                                                                                                                                                 227
Rule 24(1) – OJ 2003, 609




3. Form of the documents for European patent applications

3.1 Users of PaTrASINT software must comply with the DPMA's published technical conditions when preparing their European
patent applications.

3.2 For applications containing a sequence listing, the provisions governing the filing of sequence listings are applied mutatis
mutandis5. Currently this means that sequence listings must be attached in PDF and ASCII format.

4. Encryption

4.1 European patent applications prepared using PaTrASINT software may be encrypted for transmission6.

5. Acknowledgement of receipt

5.1 As soon as a European patent application has been received, the applicant is sent an e-mail notifying him of receipt and
giving a document reference number to assist with any queries with the DPMA.

5.2 The receipt under Rule 24(2) EPC is issued by e-mail once the files received under point 1 above have been scrutinised.
If it is not successfully transmitted, the DPMA will transmit it without delay by other means as long as the information at its
disposal so permits.

5.3 The receipt includes the identity of the Office, the date and time when the application was received, a reference or
application number allocated by the Office, a list of the files transmitted and a message digest, ie the message in compressed
form.

5.4 Acknowledgement of receipt does not imply the accordance of a filing date.

6. Illegible or incomplete documents; infected files

6.1 Further to Article 4 of the decision of the President dated 29 October 2002 1, applicants are reminded that it is their
responsibility to ensure that the application documents are complete.


                                                                                                                                                 Rule 24(1) – OJ 2003, 609




Notice from the European Patent Office dated 3 December 2003
concerning the electronic filing of documents within the
meaning of Rule 36 EPC

OJ 2003, 609
1. The European Patent Office (EPO) has extended the functionality of its epoline® Online Filing software1. As from 3
December 2003, documents other than priority documents may be filed electronically in grant proceedings. This possibility is
not yet available in opposition and appeal proceedings; in such proceedings, therefore, the electronic filing of documents is
not admissible.

2. If the EPO is acting as receiving office or international searching or preliminary examining authority under the Patent
Cooperation Treaty (PCT), no documents other than the international application (RO/101) may be filed electronically.




5
    Supplement No. 2 to OJ EPO 11/1998.
6
    The current requirements are set out in the relevant German legislation: "Verordnung über den elektronischen Rechtsverkehr im gewerblichen
    Rechtsschutz" (ERvGewRV) dated 5 August 2003 (Federal Law Gazette I, 1558, 1559 (annex)).
1
    OJ EPO 2002, 543 and 545.




228
                                                                                                                     Rule 24(1) – OJ 2003, 610




3. Receipt of documents filed online is acknowledged by the EPO during the submission session. Receipt of those filed on
electronic data carriers is acknowledged by post.

4. epoline® Online Filing software is available on request from EPO Customer Services.

For more information, contact:

EPO Customer Services
European Patent Office
Patentlaan 2
NL-2288 EE Rijswijk
Tel.: (+31-70) 340 4500
Fax: (+31-70) 340 4600
e-mail: epoline@epo.org
Internet: www.epoline.org
Contactable: Monday to Friday, from 08.00 to 18.00 hrs.


                                                                                                                                           Rule 24(1) – OJ 2003, 610




Notice dated 3 December 2003 concerning the preparation of
the technical documents of an European application in XML
format using PatXML

OJ 2003, 610
The present notice is issued in connection with the decision of the President of the European Patent Office (EPO) dated 29
October 2002 on the electronic filing of patent applications and other documents and the notice of the same date1.

1. The European Patent Office has added a new tool to its epoline® Online Filing software. PatXML allows users to create the
technical documents of European international patent applications in XML (eXtensible Markup Language2) format while using
Microsoft® Word.

2. PatXML creates a template within Word, conforming to the EPC and PCT, which helps users to prepare the technical
documents of patent applications. Using any word processor, it is then possible to copy, cut and paste from existing
documents or import text from patent management systems into PatXML.

3. With PatXML the technical documents of European and international patent applications can be saved in software- and
system-independent XML (based on a standard agreed by the EPO, JPO, USPTO and WIPO3). No prior knowledge of XML is
required.

4. The technical documents relating to European patent applications may be attached in XML format to European patent
applications filed in electronic form as of 03 December 2003.

5. The technical documents relating to international patent applications may be attached in XML format to international patent
applications filed with the EPO as receiving Office under the PCT as of 15 January 2004.

Further information can be obtained from:

EPO Customer Services

1
    OJ EPO 2002, 543 und 545.
2
    For more information about XML, go to http://www.w3.org/.
3
    See http://pcteasy.wipo.int/efiling_standards/schemaDocs/schemaDocs.htm (section entitled “Application body”).




                                                                                                                                          229
Rule 24(1) – OJ 2005, 363




European Patent Office
Patentlaan 2
NL - 2288 EE Rijswijk
Tel.: (+31-70) 340 4500
Fax: (+31-70) 340 4600
e-mail: epoline@epo.org
www.epoline.org
Open: Monday to Friday, 08.00 to 18.00 hrs.


                                                                                   Rule 24(1) – OJ 2005, 363




Notice from the European Patent Office dated 26 April 2005
concerning the new postcode for its Munich headquarters at
Erhardtstrasse 27

OJ 2005, 363
1. The EPO's Munich headquarters have been given a new postcode.

It concerns only the street address, which from 25 July 2005 is

European Patent Office
Erhardtstrasse 27
80469 Munich
Germany

2. The EPO's other addresses, reprinted below for information, remain unchanged.

Street addresses

European Patent Office
Gitschiner Strasse 103
10969 Berlin
Germany

European Patent Office
Patentlaan 2
2288 EE Rijswijk
Netherlands

European Patent Office
Rennweg 12
1030 Vienna
Austria

Postal addresses

European Patent Office
80298 Munich
Germany




230
                                                                                              Rule 24(1) – OJ 1995, 490




European Patent Office
10958 Berlin
Germany

European Patent Office
Postbus 5818
2280 HV Rijswijk
Netherlands

European Patent Office
Postfach 90
1031 Vienna
Austria

                                                                                                                      Rule 24(1) – OJ 1995, 490




Notice dated 30 May 1995 concerning the filing of patent
applications and other documents by facsimile

OJ 1995, 490
This notice is issued in connection with the Notice of the European Patent Office dated 19 March 1991, OJ EPO 1991, 223,
and notification of the official opening hours of filing and cash offices of the EPO, OJ EPO 1994, 954.

For organisational reasons the European Patent Office's fax exchange in Munich has been divided into two exchanges, one in
the PschorrHöfe building (Bayerstrasse 34) and one in the main building (Erhardtstrasse 27).

The following numbers for the EPO in Munich are available with immediate effect for filing documents by facsimile:

1.   In the PschorrHöfe building : fax (+49-89)2399-4465 (as before) for patent grant, opposition and appeal procedures.

2.   In the main building (Erhardtstraße 27): fax (+49-89)2399-4560 for Office administrative matters.

Correspondence should continue to be addressed to the European Patent Office, D-80298 Munich (postal address for use by
major clients).




                                                                                                                      231
Rule 24(1) – OJ 2005, 41



                                                                                                                                                          Rule 24(1) – OJ 2005, 41




Decision of the President of the European Patent Office dated
6 December 2004 on the use of facsimile for filing patent
applications and other documents1

OJ 2005, 41
The President of the European Patent Office, having regard to Rules 24, paragraph 1, and 36, paragraph 5, EPC and Rule
92.4 PCT, has decided as follows:

Article 1
Filing of patent applications
European patent applications and international (PCT) applications may be filed by facsimile at the European Patent Office's
filing offices in Munich, The Hague or Berlin. European patent applications may also be filed by facsimile with the competent
national authorities of those contracting states which so permit2.

Article 2
Filing of other documents
After a European patent application or an international application has been filed documents as referred to in Rule 36 EPC or
Rule 92.4 PCT with the exception of authorisations and priority documents may be filed by facsimile at the European Patent
Office's filing offices.

Article 3
Illegible or incomplete documents
Where a document transmitted by facsimile is illegible or incomplete, the document shall be treated as not having been
received to the extent that it is illegible or that the attempted transmission failed. The sender shall be notified as soon as
possible.

Article 4
Written confirmation reproducing patent applications and other documents
(1) Where a European patent application or an international application is filed by facsimile, written confirmation reproducing
the contents of the facsimile documents and complying with the requirements of the Implementing Regulations to the EPC or
the Regulations under the PCT must, at the invitation of the European Patent Office department charged with the procedure,
be supplied within a non-extendable period of one month. If the applicant fails to comply with this invitation in due time the
European patent application shall be refused (Article 91(3) EPC); the international application shall be deemed withdrawn
(Rule 92.4(g)(i) PCT).

(2) If documents relating to European patent applications or patents or to international applications are filed by facsimile,
written confirmation reproducing the contents of the facsimile documents and complying with the requirements of the
Implementing Regulations to the EPC or the Regulations under the PCT must, at the invitation of the European Patent Office
department charged with the procedure, be supplied within a non-extendable period of one month. If a party fails to comply
with this invitation in due time, the facsimile shall be deemed not to have been received (Rule 36(5) EPC, Rule 92.4(g)(ii)
PCT).

Article 5
Earlier decisions superseded
Upon entry into force of this decision the decision dated 26 May 1992 on the use of technical means of communication for
filing patent applications and other documents (OJ EPO 1992, 299) shall cease to have effect.




1
    See also the Notice from the EPO dated 6 December concerning the filing of patent applications and other documents (OJ EPO 2005, 44).
2
    This is at present permitted by the patent offices of the following contracting states: Austria, Belgium, Bulgaria, the Czech Republic, Denmark, Finland,
    France, Germany, Greece, Iceland, Ireland, Liechtenstein, Luxembourg, Monaco, Poland, Portugal, Slovakia, Slovenia, Spain, Sweden, Switzerland,
    United Kingdom.




232
                                                                                                  Rule 24(1) – OJ 2006, 373



Article 6
Entry into force
This decision shall enter into force on 1 February 2005.

Done at Munich, 6 December 2004

Alain POMPIDOU

President


                                                                                                                           Rule 24(1) – OJ 2006, 373




Processing of documents filed by fax with the EPO at The
Hague

OJ 2006, 373
To streamline and harmonise workflow, the European Patent Office has decided to re-route faxes sent to the fax number in
The Hague (+31-70) 340 30 16 to a central fax server located in Munich, where all faxes will be processed as from 12 April
2006. New European patent applications filed by fax will receive an application number from the Munich number range (see
OJ EPO 2001, 465), even if they are sent to the EPO fax number in The Hague. For further inquiries concerning documents
transmitted by fax, please call (+49-89) 23 99 44 31. Indicating the number of pages transmitted helps us to process faxed
documents efficiently.


                                                                                                                            Rule 24(1) – OJ 2005, 44




Notice from the European Patent Office dated 6 December 2004
concerning the filing of patent applications and other
documents

OJ 2005, 44
This notice is issued in connection with the Decision of the President of the EPO dated 6 December 2004 on the use of
facsimile for filing patent applications and other documents (see p. 41). It applies as from 1 February 2005.

1. Filing of patent applications

1.1 European patent applications and international (PCT) applications may be filed direct, by post or by facsimile with the
EPO's filing offices in Munich, The Hague and Berlin (see point 7)1.

1.2 European patent applications may also be filed with the competent national authorities of the contracting states direct, by
post or, if those authorities permit, by facsimile (cf. Article 1 of the Decision dated 6 December 2004).

1.3 European patent applications and international applications may not be filed by telegram, telex, teletex or similar means.
Applications so filed will not be treated as European patent applications or international applications and cannot be accorded
a valid date of filing within the meaning of Article 80 EPC or Article 11 PCT.




1
    For electronic filing see Notice dated 29 October 2002, OJ EPO 2002, 545.




                                                                                                                           233
Rule 24(1) – OJ 2005, 44




2. Filing of other documents

After a European patent application or an international application has been filed, other documents may be filed in any
proceedings before the EPO direct, by post or - with the exception of authorisations and priority documents - by facsimile at
the EPO's filing offices2. They may no longer be filed by telegram or telex. It is recommended to file documents relating to
appeal proceedings directly with the filing offices in Munich in order to expedite the procedure.

3. Signature

Requests for grant of a European patent or for applications to be processed as international applications and other
documents must be signed unless they are annexes. Where a document is filed by facsimile, the reproduction on the
facsimile of the signature of the person filing the document will be considered sufficient. The name and position of that person
must be clear from the signature.

4. Written confirmation reproducing patent applications and other documents

4.1 Written confirmation of European patent applications or other documents relating to such applications filed by
facsimile is, as a rule, no longer required. The EPO therefore recommends that no confirmation copies be sent
anymore as a routine measure. Only if the documents filed by facsimile are of inferior quality will the EPO invite the
applicant to supply a written confirmation within a non-extendable period of one month (cf. Article 4 of the Decision
dated 6 December 2004).

4.2 However for international applications filed by facsimile, the hard-copy application documents (in three copies)
complying with the Rules and the Request (Form PCT/RO/101) still have to be forwarded simultaneously and the
facsimile should state that such documents have been forwarded. Otherwise, the EPO will invite the applicant to
supply such documents within a non-extendable period of one month (cf. Article 4(1) of the Decision dated
6 December 2004). The applicants are asked to indicate the facsimile date and to make it clear that the paper
documents represent "confirmation of an application filed by facsimile". This avoids duplication of files.

5. Date of receipt of documents

5.1 Patent applications filed by facsimile are accorded as the date of filing the date on which the facsimile application
documents are received in full at the EPO provided these documents satisfy the requirements of Article 80 EPC or Article
11(1) PCT. If transmission continues after midnight and the documents received on the previous day satisfy these
requirements, the application is accorded the date of the previous day as the date of filing provided the applicant requests this
and renounces those parts of the application received after midnight.

5.2 Documents filed by facsimile at one of the EPO filing offices are accorded as the date of filing the date on which they are
received at the EPO.

5.3 Where a patent application or another document filed by facsimile is illegible or incomplete, the document shall be treated
as not having been received to the extent that it is illegible or that the attempted transmission failed (cf. Article 3 of the
Decision dated 6 December 2004).

5.4 Documents handed over personally in one of the EPO filing offices are accorded the date of handing over as the date of
filing.

5.5 Documents received by post at one of the EPO filing offices are accorded the date of receipt as the date of filing.

5.6 Documents posted in an automated mail-box at one of the EPO filing offices are accorded the date of posting as the
date of filing.

5.7 The foregoing paragraphs apply similarly to documents filed with the competent national authorities of the contracting
states. However, once the applicant has received from the EPO the communication under Rule 24(4) EPC, all further
documents relating to the application may only be filed with the EPO.




2
    For electronic filing of other documents, see Notice dated 29 October 2002, point 2.1, and Notice dated 3 December 2003, OJ EPO 2003, 609.




234
                                                                                                  Rule 24(1) – OJ 2005, 44




6. Acknowledgement of receipt

6.1 The EPO or the competent national authority of the contracting state acknowledges receipt of European patent
applications on the form provided for this purpose (EPO Form 1001 (Request for Grant), p.6). The EPO acknowledges
international applications on EPO Form 1030/1031.

6.2 The EPO acknowledges receipt of other documents on the form provided for this purpose and completed by the party
(EPO Form 1037 or 1038).

6.3 On request, the EPO acknowledges receipt by facsimile of the documents specified in points 6.1 and 6.2 against payment
of the administrative fee specified in Section 2.1, item 13, of the Schedule of fees.

To ensure prompt confirmation of receipt, the request and evidence of payment of the administrative fee or a debit order must
be enclosed with the documents or transmitted at the same time. The postal or fax address to which the receipt is to be sent
must also be given.

7. Filing offices

7.1 The filing offices of the EPO in Munich, The Hague and Berlin are open for the receipt of documents at the following
times:

Munich

Filing offices in the main building (Erhardtstrasse 27) and PschorrHöfe (Bayerstrasse 34):

Monday to Thursday: 08.00 to 16.45 hrs

Friday: 08.00 to 15.30 hrs

The Hague

Monday to Friday: 08.00 to 18.00 hrs

Berlin

Monday to Thursday: 09.00 to 12.00 and 13.00 to 15.00 hrs

Friday: 09.00 to 12.00 hrs

7.2 The EPO filing offices in Berlin and Munich are equipped with automated mail-boxes, which may be used at any time. The
automated mail-box facility is not available at the filing office in The Hague at present. Outside office hours documents may
be handed to the porter.

7.3 For filing documents by facsimile only the following numbers are to be used:

Munich

(+49 (0)89) 2399-4465

The Hague

(+31 (0)70) 340-3016

Berlin

(+49 (0)30) 25901-840

Attention is drawn to the fact that the EPO's sub-office in Vienna is not a filing office for the purposes of
Article 75(1)(a) EPC. Patent applications filed with the Vienna sub-office will be forwarded to one of the filing offices
and will only be accorded a date of filing on receipt by the latter.




                                                                                                                         235
Rule 24(1) – OJ 2002, 515




8. Application of other provisions

The provisions of the Administrative Agreement between the German Patent Office and the European Patent Office
concerning procedure on receipt of documents and payments in the version of 13 October 1989 (OJ EPO 1991, 187) are not
affected.

9. Earlier notices superseded

This notice supersedes with effect from 1 February 2005 the Notice from the European Patent Office dated 2 June 1992
concerning the filing of patent applications and other documents (OJ EPO 1992, 306).


                                                                                                                            Rule 24(1) – OJ 2002, 515




Notice dated 1 October 2002 concerning the discontinuation of
the EP-EASY project

OJ 2002, 515
1. Since 1997, applicants have been able to use the EP-EASY software developed by the EPO to prepare European patent
applications in electronic form and to file them on diskette1. The possibility of filing by diskette was seen as an intermediate
step in the process leading to the online filing of European patent applications. The online filing of European patent
applications using the epoline® software was introduced by Decision of the President of the European Patent Office dated 7
December 2000 on the electronic filing of European patent applications and subsequent documents2.

2. No confirmation on paper is required for European patent applications filed under Article 1 of this Decision (Article 10(1)
of the Decision (Article 10(1) of the Decision of the President of the EPO dated 7 December 2000). As a result of the ensuing
simplification of the procedure for applicants and the EPO alike, the Office has decided to discontinue the EP-EASY project
with effect from the end of the year.

3. As of 1 January 2003 European patent applications prepared using the EP-EASY software will therefore no longer be
accepted. The notice from the President of the European Patent Office dated 22 July 1997 (OJ EPO 1997, 377) will be
cancelled. As a result, it will also no longer be possible to file European patent applications prepared using the EP-EASY
software under Article 75(1)(b) EPC with the following central industrial property offices:

Belgium: Office de la Propriété Industrielle
Finland: Patentti- ja rekisterihallitus
France: Institut national de la propriété industrielle
Sweden: Paent- och registreringsverket
Switzerland: Eidgenössisches Institut für Geistiges Eigentum
United Kingdom: Patent Office

4. Applicants and representatives may continue to prepare and file national and international applications using the relevant
EASY software (eg PCT-EASY) where the International Bureau of the national office concerned so permit.

5. Applicants and representatives wishing to file European patent applications in electronic form using the epoline®
software issued by the EPO may obtain the software free of charge from:




1
    OJ EPO 1997, 377.
2
    Supplement to Official Journal No. 4/2001.




236
                                                                                                   Rule 24(1) – OJ 1998, 143




epoline Customer Services
        ®

Tel.: +31 70 3404500
E-mail: epoline@epo.org
www.epoline.org

                                                                                                                            Rule 24(1) – OJ 1998, 143




Launching of the beta-test of the PCT-EASY software for the
filing of international applications

OJ 1998, 143
In co-operation with the European Patent Office (EPO), the International Bureau (IB) of the World Intellectual Property
Organization (WIPO) has developed a version of the EASY1 software for the preparation and filing of international
applications (PCT-EASY), which is to be launched for beta-testing. At present, the software is available only in the English
language.

As announced in PCT Gazette No. 08/1998 and PCT Newsletter No. 03/1998, the Director General of WIPO has determined
that the format of the print-out of the computer-generated request form prepared using the PCT-EASY software is permitted
for the presentation of the request form (PCT/RO/101) in relation to international applications filed by registered beta users
with the receiving Offices participating in the pilot project.

The EPO in its capacity as receiving Office under the PCT is participating in this pilot project and will as from 1 April 1998
accept international patent applications prepared using the PCT-EASY software, provided that the conditions set out in the
PCT-EASY manual (to be delivered to each registered user together with the software) are met.

Any user of the PCT procedure interested in participating in the beta test should inform the IB accordingly.

International applications prepared using the PCT-EASY software must contain at least the following items:

(a) a print-out of the duly completed PCT-EASY generated request form with the indication "For Submission" in the header of
each page. This print-out replaces the printed request form (PCT/RO/101).

(b) the application documents (description, claims and drawings, if any) in paper form, and

(c) any other documents, if appropriate.

The one or more diskette(s) containing the completed PCT-EASY request form and the abstract should also be submitted
together with the application papers.

If the application concerns nucleotide and amino acid sequences, the relevant listings must be presented on paper as part of the
description and on a separate, clearly labelled machine-readable data carrier containing the listings in the prescribed form.2

The PCT-EASY helpdesk can be contacted at the following address:

PCT-EASY helpdesk
International Bureau of WIPO
34, chemin des Colombettes,
Geneva, SWITZERLAND
Tel.: (+41-22) 338 9523
Fax: (+41-22) 910 0030
e-mail: pcteasy.help@wipo.int

1
    For information on the EP-EASY software see OJ EPO 1997, 377.
2
    For information on the filing of sequence listings see Supplement No. 2 to OJ EPO 12/1992.




                                                                                                                           237
Rule 24(1) – OJ 1999, 165



                                                                                                                           Rule 24(1) – OJ 1999, 165




PCT Reminder: EASY for international applications

OJ 1999, 165
As mentioned in OJ EPO 1998, 627 (628), as from 1 January 1999 applicants may file the request part of international
applications in the PCT-EASY format using the PCT-EASY software made available by the International Bureau provided the
following three conditions are met:

(i) the request is presented as a computer print-out prepared using the PCT-EASY software ("request in PCT-EASY
format"),

(ii) the request is filed together with a computer diskette, prepared using that software, containing a copy in electronic form
of the data contained in the request and of the abstract ("PCT-EASY diskette"), and

(iii) the international application is filed with a receiving Office which is prepared to accept the filing of international
applications containing requests in PCT-EASY format together with PCT-EASY diskettes.

Where these requirements are fulfilled, the international fee is reduced by CHF 200 (for other currencies see Section IV of
PCT Gazette No. 48/1998 of 3.December 1998 or PCT Newsletter 12/1998, page 15, footnote 3).

As from 1 January 1999, only the General Release Version 2.80 of the PCT-EASY software should be used for preparing
requests in the PCT-EASY format. In case you would like to install other modules of the EASY software (eg EP-EASY) on the
same computer, please make sure that you are using the correct 32 bit version of these modules. Further information may be
obtained from the EP-EASY Helpdesk: easyhelp@epo.nl.

Further details of PCT-EASY have been published in Section IV of the PCT Gazette Nos. 51/1998 of 23.December 1998,
52/1998 of 30.December 98 and in the PCT Newsletters 12/1998 and 1/1999. Further information may also be obtained from
the PCT-EASY home page on the Internet (http://pcteasy.wipo.int) or by contacting WIPO's PCT-EASY Helpdesk:

Telephone: (41 22) 338 9523
Fax: (41-22) 338 8040
e-mail: pcteasy.help@wipo.int




238
                                                                                                                   Rule 24(2) – OJ 2001, 465



                                                                                                                                         Rule 24(2) – OJ 2001, 465




Notice dated 1 October 2001 concerning new patent
application numbering system for 2002

OJ 2001, 465
The current patent application numbering system has been in place since the establishment of the EPO. However the further
implementation of the on-line filing possibilities in the framework of epoline® and the on-going growth of the Euro-PCT
applications has necessitated a revision of the current patent application numbering system. The table below summarises the
patent application numbering system which will be applicable as from 1 January 2002 and until further notice. The first two
positions in the number reflect the filing year. Even though at present no EPC contracting states permit online filing via their
national patent authorities, the European Patent Office has already reserved a series of numbers for the national patent
offices.

                     Internal code: Filing        Display in Register               Series for paper     Series for online
                     place (FIPL)                 online:                           filings:             filings:

                     EP001                        EPO-Munich                        02000001- 02075000

                     EP002                        EPO-The Hague                     02075001- 02090000

                     EP003                        EPO-Berlin                        02090001- 02095000
                                                               1
                     EP001O                       EPO-OLF                                                02100001-
                                                                                                                  2
                                                                                                         02250000

                     GB001                        Great Britain                     02250001- 02270000

                     GB001O                       Great Britain-                                         02270001-02290000
                                                  OLF

                     FR001                        FR-Paris                          02290001- 02300000

                     FR002                        FR-Nantes                         02350001- 02351000

                     FR003                        FR-Toulouse                       02352001- 02353000

                     FR004                        FR-Grenoble                       02354001- 02355000

                     FR005                        FR-Lyon                           02356001- 02357000

                     FR006                        FR-Marseille                      02358001- 02359000

                     FR007                        FR-Strasbourg                     02360001- 02361000

                     FR008                        FR-Bordeaux                       02362001- 02363000

                     FR009                        FR-Rennes                         02364001- 02365000

                     FR010                        FR-Nancy                          02366001- 02367000

                     FR011                        FR-Nice                           02368001- 02369000

                     FR012                        FR-Lille                          02370001- 02371000

                     FR001O                       FR-Paris-OLF                                           02300001-
                                                                                                                  3
                                                                                                         02325000

                     FR002O                       FR-Nantes-OLF                                          02351001- 02352000

                     FR003O                       FR-Toulouse-OLF                                        02353001- 02354000

1
    OLF is online filing.
2
    Including coverage of online filings not possible via national offices (yet).
3
    Including coverage if decided for one online filing location.




                                                                                                                                        239
Rule 24(2) – OJ 2001, 465




                     Internal code: Filing        Display in Register   Series for paper     Series for online
                     place (FIPL)                 online:               filings:             filings:

                     FR004O                       FR-Grenoble-OLF                            02355001- 02356000

                     FR005O                       FR-Lyon-OLF                                02357001- 02358000

                     FR006O                       FR-Marseille-OLF                           02359001- 02360000

                     FR007O                       FR-Strasbourg-OLF                          02361001- 02362000

                     FR008O                       FR-Bordeaux-OLF                            02363001- 02364000

                     FR009O                       FR-Rennes-OLF                              02365001- 02366000

                     FR010O                       FR-Nancy-OLF                               02367001- 02368000

                     FR011O                       FR-Nice-OLF                                02369001- 02370000

                     FR012O                       FR-Lille-OLF                               02371001- 02372000

                     ES001                        ES-Madrid             02380001- 02381000

                     ES002                        ES-Barcelona          02384001- 02384100

                     ES003                        ES-Sevilla            02384201- 02384300

                     ES004                        ES-Tenerife           02384401- 02384500

                     ES005                        ES-La Coruña          02384601- 02384700

                     ES006                        ES-Pamplona           02384801- 02384900

                     ES007                        ES-Valencia           02385001- 02385100

                     ES008                        ES-Victoria           02385201- 02385300

                     ES001O                       ES-Madrid-OLF                              02381001-
                                                                                                      4
                                                                                             02384000

                     ES002O                       ES-Barcelona-OLF                           02384101- 02384200

                     ES003O                       ES-Sevilla-OLF                             02384301- 02384400

                     ES004O                       ES-Tenerife-OLF                            02384501- 02384600

                     ES005O                       ES-La Coruña-OLF                           02384701- 02384800

                     ES006O                       ES-Pamplona-OLF                            02384901- 02385000

                     ES007O                       ES-Valencia-OLF                            02385101- 02385200

                     ES008O                       ES-Victoria-OLF                            02385301- 02385400

                     GR001                        Greece                02386001- 02387000

                     GR001O                       Greece-OLF                                 02387001- 02388000

                     DK001                        Denmark               02388001- 02389000

                     DK001O                       Denmark-OLF                                02389001- 02390000

                     CY001                        Cyprus                02390001- 02390500

                     CY001O                       Cyprus-OLF                                 02390501- 02391000

                     LU001                        Luxembourg            02391001- 02391500



4
    Including coverage if decided for one online filing location.




240
                                                                             Rule 24(2) – OJ 2001, 465




Internal code: Filing   Display in Register   Series for paper     Series for online
place (FIPL)            online:               filings:             filings:

LU001O                  Luxembourg-OLF                             02391501- 02392000

MC001                   Monaco                02392001- 02393000

MC001O                  Monaco-OLF                                 02393001- 02394000

IE001                   Ireland               02394001- 02395000

IE001O                  Ireland-OLF                                02395001- 02396000

FI001                   Finland               02396001- 02397000

FI001O                  Finland-OLF                                02397001- 02398000

PT001                   Portugal              02398001- 02399000

PT001O                  Portugal-OLF                               02399001- 02400000

DE001                   DPMA-Munich           02400001- 02401000

DE002                   DPMA-Jena             02403001- 02403100

DE003                   DPMA-Berlin           02403201- 02403300

DE001O                  DPMA-Munich-OLF                            02401001-
                                                                            3
                                                                   02403000

DE002O                  DPMA-Jena-OLF                              02403101-02403200

DE003O                  DPMA-Berlin-OLF                            02403301- 02403400

TR001                   Turkey                02404001- 02404500

TR001O                  Turkey-OLF                                 02404501- 02405000

CH001                   Switzerland           02405001- 02415000

CH001O                  Switzerland-OLF                            02415001- 02425000

IT001                   Italy                 02425001- 02435000

IT001O                  Italy-OLF                                  02435001- 02445000

SE001                   Sweden                02445001-02446000

SE001O                  Sweden-OLF                                 02446001- 02447000

BE001                   Belgium               02447001- 02448000

BE001O                  Belgium-OLF                                02448001- 02449000

AT001                   Austria               02450001- 02455000

AT001O                  Austria-OLF                                02455001- 02460000

IB001                   EuroPCT               02700001- 02999999




                                                                                                  241
Rule 24(4) – OJ 1990, 306



                                                                                                                             Rule 24(4) – OJ 1990, 306




Notice dated 1 June 1990
concerning EPO confirmation of receipt
pursuant to Rule 24(4) EPC

OJ 1990, 306
1.    At the request of clients the EPO has changed and speeded up the procedure for confirming the receipt of European
      patent applications forwarded by a central industrial property office of a Contracting State.

2.    As from 1 August 1990 the applicant or his representative will no longer receive the communication pursuant to
      Rule 24(4) EPC in the form of a computer print-out (EPO Form 1033) but instead a copy of the receipt for documents at
      the back of the request for grant of a European patent (EPO Form 1001 01.90).

      The advantage is that this acknowledgement can be sent immediately upon receipt of the application by the EPO without
      first having to wait for computer recording of the bibliographic data as previously. The applicant is thereby in most cases
      informed in time that the national authority has complied with the time limit for forwarding European patent applications
      pursuant to Article 77(5) EPC.

3.    In order to ensure the smooth operation of the new procedure, the EPO requests applicants filing European
       patent applications via the competent national patent authorities always to attach the pre-printed receipt for
       documents (page 5 of EPO Form 1001 01.90) in 4 copies.

      It is particularly important to remember that all documents relating to the European patent application must be filed
      with the EPO immediately upon receipt of the communication under Rule 24(4) EPC. Documents filed after receipt
      of this communication with a national authority and forwarded to the EPO by the latter are accorded as date of receipt
      the date on which they reached the EPO.




242
                                                                                                 Rule 26(2)(b) – OJ 1991, 224



                                                                                                                             Rule 26(2)(b) – OJ 1991, 224




Notice dated 13 March 1991 concerning the amendment of the
title of the invention in European patent applications

OJ 1991, 224
1. Present procedure
The EPO checks the title of the invention when examining a European patent application pursuant to Article 91 EPC for
compliance with the formal requirements. If the title does not accord with the provisions of Rule 26(2)(b) EPC the EPO
proposes a new title which is communicated to the applicant. If the latter does not raise any objection to the proposed title
within one month of notification he is assumed to have accepted it.

Although experience has shown that in some 95% of all cases the applicant accepts the proposed amendments, the time limit
for a possible response still has to be allowed to expire, and this can delay publication of the European patent application.

2. New procedure
After consulting the Standing Advisory Committee before the EPO (SACEPO) the EPO has decided to simplify and streamline
the procedure for amending the title of the invention as follows:

As from 1 August 1991 the procedure under the Guidelines for Examination in the European Patent Office, A-III, 7.3, in
accordance with which the applicant is informed in advance by means of EPO Form 1113 that the EPO has amended the title,
will be discontinued. If the title has to be changed, this will be done without informing the applicant there and then. This will
bring the EPO's practice into line with the international procedure laid down in Rule 37.2 PCT.

The title, in the form in which it is to be published (together with its translations in the two other official languages), will
however still be communicated to the applicant by means of the "Notification of European publication number and information
on the application of Article 67(3) EPC" (EPO Form 1133). If the original title has been changed this will be expressly drawn to
the applicant's attention.

If the applicant does not agree with the title as amended by the EPO he has the possibility of requesting a further amendment
in the subsequent proceedings before the Examining Division.

The above-mentioned Guidelines will be amended accordingly in the next general revision.




                                                                                                                            243
Rule 27a – OJ 1998, Suppl. No. 2 to OJ 11/1998, page 59



                                                                                                                                                                                                  Rule 27a
                                                                                                                                                   Rule 27a – OJ 1998, Suppl. No. 2 to OJ 11/1998, page 59




Notice from the European Patent Office dated 2 October 1998
concerning the presentation of nucleotide and amino acid
sequences in patent applications and the filing of sequence
listings

OJ 1998, Suppl. No. 2 to OJ 11/98, p. 59
The "Standard for the presentation of nucleotide and amino acid sequence listings in international applications under the
PCT"1 (or "PCT Standard", see Rules 5.2, 12.1 (d) and 13ter PCT as well as Section 208 of and Annex C to the PCT
Administrative Instructions) came into force for international applications under the PCT on 1 July 1998. WIPO Standard
ST.25 for the presentation of nucleotide and amino acid sequences in patent applications also came into force on that date.
This new WIPO Standard, which replaces WIPO Standards ST.23 and ST.24, recommends that patent offices also apply the
PCT Standard mutatis mutandis to all patent applications in addition to international applications.

According to the decision of the President of the European Patent Office dated 2 October 19982 (hereinafter referred to as the
"decision of the President"), WIPO Standard ST.25, and hence the PCT Standard, will enter into force for the European
patent grant procedure on 1 January 1999.

This notice supplements the decision of the President and is intended to clarify the EPC and PCT procedures.

I. ....


                                                                                                                                                                                  Rule 27a – OJ 2005, 225




Decision of the President of the European Patent Office dated
26 January 2005 concerning the late furnishing fee under Rule
13ter PCT

OJ 2005, 225
The President of the European Patent Office, having regard to Rule 13ter PCT as revised which will enter into force on 1 April
20051, has decided as follows:

Article 1
Where the EPO acting as International Searching Authority or International Preliminary Examining Authority invites the
applicant to furnish a sequence listing pursuant to Rule 13ter.1(a) or (b) PCT or Rule 13ter.2 PCT, such furnishing shall be
subjected to the payment of a late furnishing fee of EUR 200.

Article 2
Entry into force

This decision shall enter into force on 1 April 2005.


1
     See special edition of the PCT Gazette of 25 June 1998.
2
     The complete text as well as the decision of the President see supplement No. 2 of OJ 11/98.
1
     Note: Rule 13ter.1 as revised will apply to international applications whose filing date is on or after 1 April 2005. However by Decision of the PCT
     Assembly, Rule 13ter.2 as revised shall apply to international applications in respect of which a demand is filed on or after1 April 2005 even if the
     application was filed before that date.
     For information on the applicable technical requirements regarding sequence listings in electronic form, see PCT Gazette 48/2004, Section IV, 28050.




244
                                                                                                Rule 27a – OJ 1992, 312




Done at Munich on 26 January 2005

Professor Alain POMPIDOU

President


                                                                                                                       Rule 27a – OJ 1992, 312




Notice from the European Patent Office dated 15 May 1992
concerning the computer program PatentIn

OJ 1992, 312
The European Patent Office has developed, in close cooperation with the United States Patent and Trademark Office, a
computer program, called PatentIn, that facilitates compliance with the present recommendation (Notice from the European
Patent Office dated 15 November 1989, Supplement to OJ EPO 12/1989) and future requirements concerning the
standardised representation of nucleotide and amino acid sequences in European patent applications.

The PatentIn program is available from the EPO on a 3.5" diskette free of charge. It may be run on IBM PC XT, AT, PS/2 and
compatible systems having hard-disk drives. While the PatentIn program is not the sole means for establishing standardised
sequence listings, it is especially designed to enable compliance with the recommended and soon prescribed (probably as
from 1 January 1993) standard.

Requests for the PatentIn program and supporting material should be addressed in writing to:

European Patent Office
Receiving Section
Attn. Ms. E. Jaspers-Otten
Patentlaan 2
NL-2288 EE Rijswijk
Telefax /070) 340-2693




                                                                                                                      245
Rule 28 – OJ 1980, 380



                                                                                                                                               Rule 28
                                                                                                                                Rule 28 – OJ 1980, 380




BUDAPEST TREATY
Filing by the European Patent Organisation of the declaration
specified in Article 9 of the Budapest Treaty

OJ 1980, 380
On 26th August 1980, the President of the European Patent Office, acting on behalf of the European Patent Organisation,
filed with the Director General of WIPO the declaration specified in Article 9 of the Budapest Treaty on the International
Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure. This declaration states that the
Organisation accepts the obligation of recognition provided for in Article 3(1)(a) of the Budapest Treaty, the obligation
concerning the requirements referred to in Article 3(2) of the said Treaty and all the effects of the provisions of that Treaty and
the Regulations applicable to intergovernmental industrial property organisations.

The declaration will become effective from 26 November 1980.

In accordance with the declaration, the European Patent Office will recognise, as from that date, for the purposes of Rules 28
and 28a of the EPC, the deposit of micro-organisms with any international depositary authority. Such recognition will include
the recognition of the fact and date of the deposit as indicated by the international depositary authority as well as the
recognition of the fact that what is furnished as a sample is a sample of the deposited micro-organism.

At the date of this notice going to print, no depositary institution had yet acquired the status of international depositary
authority under Article 7 of the Budapest Treaty. However, several institutions are expected to acquire such status in the near
future and immediate announcement will be made of this in the Official Journal.

Therefore, under Rule 28, paragraph 9, the depositary institutions recognised for the purpose of Rules 28 and 28a of the EPC
are at present only those mentioned in Official Journal No. 8/1978, p. 401 and No. 1/1980, pp. 4 to 6.


                                                                                                                                Rule 28 – OJ 1981, 359




Budapest Treaty (BT)
Recognition of microbiological experts
for the purpose of Rule 28 EPC

OJ 1981, 359
By Decision of 28 July 1981, the President of the European Patent Office recognised, in accordance with Rule 28(5)(b) EPC,
a first batch of experts in the field of microbiology as experts for the purposes of Rule 28 EPC. The first list of these experts,
containing all the relevant information, is published in Part III below pursuant to Rule 28(9) EPC.

The recognition of experts for the purposes of Rule 28 occurs on the basis and in accordance with the "General Conditions
set by the President of the European Patent Office for the recognition of experts in accordance with Rule 28(5)(b) of the
European Patent Convention (EPC)" and the "Declaration for the purposes of recognition as an expert by the President of the
European Patent Office in accordance with Rule 28(5)(b) of the European Patent Convention (EPC)" which has to be supplied
by each applicant for recognition. These two texts are given in Parts I and II below.

1. GENERAL CONDITIONS SET BY THE PRESIDENT OF THE
EUROPEAN PATENT OFFICE FOR THE RECOGNITION OF EXPERTS




246
                                                                                                        Rule 28 – OJ 1981, 359



IN ACCORDANCE WITH RULE 28, PARAGRAPH 5(b),
OF THE EUROPEAN PATENT CONVENTION (EPC)

Preamble
Rule 28 EPC as amended by Decision of the Administrative Council of 30 November 1979 (Official Journal 11-12/1979,
p.447), entered into force on 1 June 1980. It lays down special requirements for European patent applications concerning
certain inventions in the field of microbiology. If such an invention involves the use of a micro-organism which is not available
to the public and which cannot be described in the European patent application in such a manner as to enable the invention
to be carried out by a person skilled in the art, the invention is only regarded as being sufficiently disclosed within the meaning
of Article 83 EPC if a culture of the micro-organism has been deposited with a depository institution recognised by the
European Patent Office (EPO) not later than the date of filing of the application, and if the application gives certain information
necessary for characterising and identifying the micro-organism (Rule 28, paragraph 1).

The deposited culture of the micro-organism is available upon request to any person at the latest from the date of publication
of the European patent application. Such availability is effected by the issue of a sample to the requester, provided that the
latter has undertaken, vis-à-vis the applicant for or proprietor of the patent, not to make the deposited culture or any culture
derived therefrom available to any third party and to use them for experimental purposes only, until such time as certain
events specified in Rule 28, paragraph 3, take place (grant of the patent or some other outcome of the patent application).

However, until the date on which the technical preparations for publication of the application are deemed to have been
completed, the applicant may inform the EPO that, until such time as certain events specified in Rule 28, paragraph 4, take
place (grant of the patent or some other outcome of the patent application), the availability of the deposited culture shall be
effected only by the issue of a sample to an expert nominated by the requester.

In accordance with Rule 28, paragraph 5, the requester may nominate as an expert any natural person whose nomination has
the approval of the applicant or who is recognised as an expert by the President of the EPO. The list of experts recognised for
the purpose of Rule 28 shall be published in the Official Journal of the EPO (Rule 28, paragraph 9).

The following conditions and requirements apply with regard to recognition as an expert for the purpose of Rule 28 EPC
(hereinafter referred to as "recognised expert").

General prerequisites for recognition as an expert
1. Any natural person may be recognised as an expert for the purpose of Rule 28 EPC, provided that person is able to
   demonstrate that he has sufficient scientific and practical experience in the field of microbiology in its widest sense to
   qualify him to deliver, on the basis of taxonomic, practical or other kinds of analyses, experiments or tests, expert
   opinions regarding micro-organisms deposited for the purpose of Rule 28 EPC, and provided that he possesses or has
   access to the equipment, appliances and facilities necessary for delivering such opinions.
   These prerequisites may apply in respect of one or more kinds of micro-organisms and one or more kinds of analyses,
   experiments or tests.

2.   A person cannot be recognised as an expert unless he provides sufficient guarantee that he possesses the personal
     independence and impartiality expected of an expert. As a means of asserting his independence and impartiality, the
     applicant for recognition shall declare to the President of the EPO that to the best of his knowledge and belief there are
     no reasons which might give rise to justified doubts as to his independence and impartiality as an expert or which might
     conflict in any other way with his recognition as an expert.

3.   A person cannot be recognised as an expert unless he undertakes vis-à-vis the President of the EPO that he is prepared
     to deliver expert opinions for any person upon request in respect of micro-organisms deposited for the purpose of
     Rule 28 EPC, under the conditions prescribed by Rule 28 and in particular paragraph 3 thereof, if the micro-organism
     concerned belongs to one of the kinds of micro-organisms specified by him and notified to the President of the EPO.
     However, a recognised expert's acceptance or refusal in individual cases of requests for an opinion is governed solely
     by points 7 to 10 of these Conditions.

4.   A person cannot be recognised as an expert unless he undertakes vis-à-vis the President of the EPO to enter into and
     comply, vis-à-vis any applicant for or proprietor of a patent who for the purpose of Rule 28 EPC has deposited a micro-
     organism a sample of which is to be or has been supplied to him, in his capacity as a recognised expert, for the purpose
     of an expert opinion at a request of a third party, with the obligations under Rule 28, paragraph 3(a) and (b), EPC -
     paragraph 7 of the latter Rule being observed and the requester (person commissioning the opinion) being regarded as
     a third party within the meaning of Rule 28, paragraph 3, EPC.



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Rule 28 – OJ 1981, 359




5.    Any person applying for recognition as an expert shall preferably specify what particular kinds of analyses, experiments
      or tests - e.g. taxonomic, practical or other - he is prepared or, as the case may be, not prepared to carry out.

6.    A person cannot be recognised as an expert unless he declares to the President of the EPC that he has taken note of
      these Conditions and unless he undertakes to comply with the obligations there under for the duration of his status as
      recognised expert and, where applicable, after he ceases to hold such status.

Acceptance or refusal by a recognised expert
of requests for an expert opinion
7. Subject to an agreement with the requester (person commissioning the opinion) concerning special requirements
     attaching to his work, including reasonable remuneration thereof, the recognised expert shall deliver the opinion required
     by the requester (person commissioning the opinion) unless he is obliged under point 8 of these Conditions, or entitled
     under point 9 thereof to refuse the request.

8.    The recognised expert shall be obliged to refuse a request for an expert opinion, if

      (i)     its subject, on thorough examination, lies outside the range of his expertise;

      (ii)    he does not possess the equipment, appliances or facilities necessary for carrying out the commission for an
              opinion (in particular that necessary for performing the required analyses, experiments or tests), or has access to
              such equipment, appliances or facilities only on conditions incompatible with his undertaking not to make the
              sample he has received of the deposited culture available to any third party, as prescribed by
              Rule 28, paragraph 3(a), EPC;

      (iii)   if there are circumstances which might give rise to justified doubts as to his independence and impartiality, e.g.
              because of conflict of interests;

      (iv)    in accepting or performing the commission for an opinion, the recognised expert would infringe, as a result of the
              agreement desired by the requester (person commissioning the opinion), his obligations under these Conditions
              or under Rule 28 EPC.

9.    The recognised expert shall be entitled to refuse a request for an expert opinion, if

      (i)     the micro-organism to which the request relates does not belong to one of the kinds of micro-organisms specified
              by him in accordance with point 3 of these conditions or if the opinion desired by the requester (person
              commissioning the opinion) requires analyses, experiments or tests which the recognised expert, by virtue of a
              declaration under point 5 of these Conditions, is not prepared to carry out;

      (ii)    as a result of personal circumstances, e.g. illness, overwork or lengthy absence, he cannot deliver the opinion or
              cannot do so within a reasonable period of time.

10. If the recognised expert refuses to accept a request for an opinion, he shall inform the requester (person commissioning
    the opinion) and the President of the EPO immediately, giving the reasons for refusal.

Performance of commissions for
an opinion by the recognised expert
11. The performance of commissions by the recognised expert is governed by the content of the agreements between the
    recognised expert and the requester (person commissioning the opinion) and by the law applicable to such agreements.

12. The recognised expert shall observe the principles of objectivity and impartiality in performing the commission and
    making known its results to the requester (person commissioning the opinion).

13. Without prejudice to his undertaking under Rule 28, paragraph 3(a) EPC, the recognised expert shall, when performing
    the commission, take all necessary measures to prevent the micro-organism samples received and further samples
    derived therefrom being made available to third parties.

14. The recognised expert shall as far as possible perform the commission and, in particular, the necessary analyses,
    experiments or tests in person and must not appoint a proxy for the purpose. However, he may, insofar as is necessary,
    make use of the services of assistants and other persons under his personal direction and supervision. Such persons
    are not to be regarded as "third parties" within the meaning of Rule 28, paragraph 3(a), EPC and point 13 of these
    Conditions.




248
                                                                                                          Rule 28 – OJ 1986, 269




15. Liability on the part of the recognised expert, including liability for persons engaged by him in accordance with point 14
    of these Conditions, vis-à-vis persons other than the requester (person commissioning the opinion) and in particular vis-
    à-vis the applicant for or proprietor of a patent, arising out of a breach of contractual or statutory obligations and the
    resulting damages, is governed by the law applicable.

Termination of status as recognised expert
16. The status as recognised expert ceases when the recognised expert is deleted from the list of recognised experts. This
    shall occur:

     (i)    at any time upon request by the recognised expert;

     (ii)   ex officio, if the prerequisites for recognition as an expert are not at the time of recognition or cease to be met, or
            for any other important reason, e.g. if the recognised expert infringes his obligations under Rule 28 EPC or under
            these Conditions.

Other conditions and requirements
17. There is no automatic legal right to recognition as an expert for the purpose of Rule 28 EPC, even if the applicant meets
    all the prerequisites for recognition specified in these Conditions.

18. The recognised expert shall in his capacity, and particularly when performing commissions for an opinion, observe the
    generally recognised rules and principles of professional conduct applicable to his field of expertise.

19. The recognised expert shall inform the President of the EPO of any change in his personal, professional or other
    circumstances which is of importance to or may have an effect on his recognition or work as recognised expert.

20. The European Patent Office shall supply the recognised expert with any information which he needs in order to perform
    his work as recognised expert.

21. The President of the EPO shall publish in the Official Journal the list of recognised experts and any changes therein.
    This list shall give the name and address of each recognised expert, the kinds of micro-organisms specified by him in
    accordance with point 3 of these Conditions and, where applicable, the particular kinds of analyses, experiments or tests
    he is not prepared to carry out and which he has specified in accordance with point 5 of these Conditions.

22. These Conditions shall apply for the duration of the status as recognised expert and, where applicable, after this status
    ceases to exist. The obligation incurred by the recognised expert under Rule 28, paragraph 3 EPC vis-à-vis the applicant
    for or proprietor of the patent shall remain unaffected.


                                                                                                                                  Rule 28 – OJ 1986, 269




Budapest Treaty (BT)
Notice of the European Patent Office dated 18 July 1986
concerning European patent applications and European
patents in which reference is made to micro-organisms

OJ 1986, 269
I. PURPOSE OF THE NOTICE

1.   Where, in disclosing the invention, a European patent application refers to one or more micro-organisms deposited with
     depositary institutions, applicants are strongly advised to indicate clearly in the application as filed the legal status of the
     micro-organism deposit.




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Rule 28 – OJ 1986, 269




      If this is done the EPO, when examining the application for compliance with Article 83 EPC concerning disclosure of the
      invention in conjunction, where applicable, with Rule 28(1) and (2) EPC, will not need to communicate with applicants on
      the matter. Equally important, it will enable the public to determine the procedure for gaining access to the micro-
      organism.

2.    The form entitled "Request for Grant of a European Patent" (EPO Form 1001) includes a section headed "Micro-
      organisms"1 which must be completed when the patent application refers to a micro-organism deposited in accordance
      with Rule 28 EPC.

      This section of the Request for Grant form contains a box which must be crossed if the invention refers to one or more
      micro-organisms deposited in accordance with Rule 28 EPC and requires the applicant to indicate where in the technical
      documents of the European patent application particulars of the depositary institution and the file number of the deposit
      are given2 or to indicate that such particulars will be furnished at a later date.

      Applicants frequently fail to complete this part of the Request for Grant form or do so incorrectly. The purpose of this
      notice is to assist applicants with the drafting of their applications and to facilitate completion of the "Micro-
      organisms" section of the Request for Grant form where the European patent application refers to one or more
      micro-organisms deposited in accordance with Rule 28 EPC (Chapter II below).

3.    Where the European patent application refers to a micro-organism deposited in accordance with Rule 28(1) EPC, the
      issue of a sample of the micro-organism is governed by Rule 28(3) to (8) which requires submission to the EPO of a
      request for furnishing of a sample made on the appropriate form. The EPO certifies the request before transmitting it to
      the depositary institution which is then authorised to issue the sample.

4.    Copies of the forms to be used for requesting the furnishing of a sample of a micro-organism deposited in accordance
      with Rule 28 EPC are available from the EPO.

      Another purpose of this Notice is to explain the request form and the sample-issue procedure (Chapter III
      below).

II. GUIDANCE ON COMPLETING THE "MICRO-ORGANISMS" SECTION
OF THE REQUEST FOR GRANT FORM

5.    Deposited micro-organisms referred to in a European patent application generally belong to one of the two following
      categories which will be considered in turn below:

      A.       Micro-organisms which are not available to the public and which cannot be described sufficiently;

      B.       Micro-organisms which are available to the public.

      In case A, the "Micro-organisms" section of the Request for Grant Form is to be completed, but not in case B.

A. Micro-organisms not available to the public and
which cannot be described sufficiently
6. A typical example of a European patent application referring to a micro-organism not available to the public on the date
    the application is filed and which cannot be described in such a manner as to meet the requirements of Article 83 EPC
    (Disclosure of the invention) is where the invention relates to a new micro-organism obtained by mutation from known
    strains available to the public.

7.    To meet the requirements of Article 83 in conjunction with Rule 28 EPC a culture of this new micro-organism must have
      been deposited with a recognised depositary institution not later than the date of filing of the European patent
      application, in accordance with the legal statute on the basis of which the institution is recognised2.

1
     The current version of the request form (EPO Form 1001) bears the date "02.82"; in this version, the "Micro-organisms" section comes under Part XII. An
     amended version of the request form (EPO Form 1001 10.86) in which the "Micro-organisms" section will appear under points 29 to 33, will be issued shortly.
2
     The following are recognised for the purposes of Rule 28 EPC: the international depositary authorities under the Budapest Treaty (cf. OJ EPO 10/1980, p.
     380) and the depositary institutions with which the European Patent Organisation has concluded bilateral agreements (cf. OJ EPO 12/1982, p. 452 et seq.,
     5/1983, p. 203 and 7/1984, p. 323). Cultures of micro-organisms must be deposited in accordance with the provisions of the Budapest Treaty or of a
     bilateral agreement; if they were originally deposited in accordance with other legislation, the deposit must be converted not later than the date of filing
     of the European patent application (cf. paragraph 29 of the report adopted by the Assembly of the Budapest Union at its second session in Geneva
     from 12 to 20 January 1981, document BP/A/II/11 and point 15 of the bilateral agreements between the EPO and the institutions concerned). The list of
     recognised depositary institutions and types of micro-organisms accepted is published periodically in the OJ EPO and is also given in Annex VI to the
     EPO Information Brochure "How t