Posts by: Anders Heebøll-Nielsen | (2) posts

An unknown exception error at the EPO

We recently blogged about how the EPO has introduced the concept of small entities for obtaining fee reductions in procedures before the EPO. The new procedure can create a peculiar error that at least I did not foresee. The EPO Form 1001E for request for grant of a European patent contains a field, Item 5, where typically Danish, Swedish and Dutch applicants would request examination in their own languages. Before the new Rule 6(4) EPC this would give the applicant a 20% reduction of the examination fee. Now, however, the request form also contains an Item 14.1, “The/Each applicant hereby declares that he is an entity or a natural person under Rule 6(4) EPC”, that must also be checked in order to obtain the current 30% fee reduction.

If Item 14.1 is not checked when the examination is requested in an admissible non-EPO language the EPO cannot process the application any further. The same is likely also relevant if Item 14.1 is checked but examination not requested in the admissible non-EPO language. Such exception errors seem not defined in the Guidelines and will currently result in a phone call from a friendly (but probably somewhat annoyed) formalities officer suggesting how to rectify the error so that the EPO can start the search of the invention. The solution to the error can be to submit a statement to the EPO that either the request in the admissible non-EPO language is withdrawn or that the applicant is a small entity. A statement withdrawing the request for examination in the admissible non-EPO language will be registered as a request pursuant to Rule 139 EPC that the EPO can decide to allow.

Even though payment of the examination fee can be postponed to about two years after filing the application and that examination is requested after a search report has been issued, the request for examination made in an admissible non-EPO language on filing the application must be made together with checking Item 14.1.

It is not clear what will happen if no statement is sent to the EPO. Maybe this can be used as a simple and low risk way to postpone prosecution?

Anders Heebøll-Nielsen, European Patent Attorney & Certified Danish Patent Agent

A brighter future for the EU patent

A brighter future for the EU patent

11 EU member states have decided to move towards an EU patent under an enhanced cooperation aiming to reduce costs of patenting in the EU.

Progress towards implementation of the long desired EU patent has until now been hindered by disagreements between the EU member states regarding translation requirements. However, at a meeting at the Council of the European Union on 10th December it was decided by a group of member states to ask the Commission to present a formal proposal for initiating a so-called “enhanced cooperation” to move ahead on the creation of an unified EU patent system. An enhanced cooperation is a last resort option when at least nine member states agree to proceed to reach a goal for which unanimity cannot be reached by all member states. At the meeting the sufficient number of states, i.e. Denmark, Germany, Estonia, France, Lithuania, Luxembourg, the Netherlands, Slovenia, Finland, Sweden and the UK, thus authorised the Commission to submit the legislative proposal, which will be submitted on 14th December.

It is expected that the EU patent emerging from the enhanced cooperation will significantly reduce costs for translations by letting the European Patent Office prosecute the application in English, German or French with no further immediate translations required. The states supporting the enhanced cooperation are all parties to the London Agreement and thus already have reduced translation requirements compared to other member states/EPC-countries. However, the EU patent system may allow a further reduction of the translation costs by no longer requiring a translation of the patent claims, and moreover it may also provide a simplified procedure for validation of the patent once granted. Additional expectations from the EU patent system are that machine translations of published patent applications will be made available on demand, online and free of charge.

When the enhanced cooperation is implemented it will be open to other member states wishing to join in.

Keep track of the progress of the EU patent system on the websites of the Council: http://www.consilium.europa.eu/app/newsroom/PressHome.aspx?id=221&lang=EN and the Commision: http://ec.europa.eu/news/index_en.htm

Anders Heebøll-Nielsen, European Patent Attorney, Awapatent

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