Monday, October 14, 2024 Our answers to EPAC 2024 Part 2

 Part 2 was a lot of work. Some questions were challenging/difficult.

We have long answers; maybe a bit overcomplete.

We welcome your comments.

Kind regards,

Jelle, Diane, Tanja

Case 1 (4 points)

International application WO-X was filed at the EPO on 27 August 2024. No fees have been paid.

1.      What fees are due on filing for WO-X? Fee amounts need not be mentioned.

2.      What is the time limit for paying these fees?

3.      What happens if these fees are not paid within the time limit, and what can you do about it?

 Answer:

 1. Fees due to EPO as rO: (Euro-PCT Guide 2.27.003)

·         International filing fee (incl. fee per sheet in excess of 30)

·         international search fee for EPO as ISA

·         transmittal fee

      2. Time limit: One month of filing the international application. 27 August 2024 + 1m à 27 Sept 2024 (Friday)

3.  3.      Not paid in time (Euro-PCT Guide 2.27.026; AG-IP 5.193, 194).

·         EPO invites applicant to pay missing amount together with a late payment fee, equal to 50% of international filing fee

·         If the missing amount is paid before invitation sent, it is considered paid in time

·         Otherwise, pay missing amount + late payment fee within 1m from invitation.

·         If not paid in time: international application will be considered withdrawn and EPO as rO will issue a declaration to this effect

·         If missing amount + late payment fee paid before declaration issued, the fees will be considered paid in time and processing of WO-X will continue (AG-IP 5.195)

 

Case 2 (6 points)

On 25 October 2019, the Spanish University Isabel Il and the company Tomato Matters filed a European patent application in Spanish, accompanied by a translation into English. Tomato Matters employs more than 260 employees.

The University Isabel Il has filed two patent applications with the EPO over the past five years.

On 10 October 2024, Tomato Matters transfers its rights to Naranjas Navel, a company which employs 9 members of staff and whose annual turnover is EUR 1 million. Naranjas Navel has never filed any patent applications with the EPO.

In a communication from the EPO under Rule 71(3) EPC dated 10 October 2024, the name of the applicants is given as: Isabe III (clerical) and Tomato Matters.

1.      What has to be done to obtain a Unitary Patent as soon as possible for Isabel Il and Naranjas Navel? Is it possible to benefit from the compensation scheme?

Please list the necessary steps at minimum cost. You should identify the fees that have to be paid, but you do not need to specify their amounts.

2.      Let us now suppose that the request for unitary effect has been refused.

What is the time limit for lodging an application to reverse this decision, and to whom should the application be addressed?

Answer

1.      Steps to get UP as soon as possible

·         File the request for registering the transfer from Tomato Matters to Naranjas Navel, including evidence, with signatures of both companies

·         File request using use MyEPO, to avoid the need to pay a fee for registering the transfer

·         File form 1011 and declare that Naranjas is a micro-entity and that isabell II is a university (if not already done)

·         Both applicants therefore qualify for a 30% reduction in fees

·         If renewal fee for 5th year not already paid, pay this by 31/10 (30% reduction)

·         Respond to the R.71(3) communication by filing a translation of the claims in French and German and pay the fee for grant and publishing (30% reduction); file as soon as possible, but no later then 4m from date of R 71(3) communication: 10/10/2024 + 4m à 10 Feb 2025 (Monday).

·         Also in response to R 71(3) correct the error in the bibliographic data: Isabel III should be Isabel Il. Submit evidence of the real name (e.g. transfer request).

 

·         When European patent is granted, file request for unitary effect with the EPO, preferably using Form 7000, no later than 1m after date of publication of grant in EPB (R. 6 UPR)

·         Comment: request can be filed before grant, but EPO will not process until grant is published

·         Also need to file translation of granted EP into an official EU language: recommend to use Spanish application as filed (as much as possible) to save costs.

Compensation Scheme

Yes, it is possible to benefit from compensation scheme, since EP application was filed in Spanish (admissible non-EPO language) and since each applicant is based in an EU State (Spain) and are entities as defined in R. 7a2 EPC.

Declare entity status in Form 700 when filing request + submitting translatio

2.      Appeal: possible to bring an action against this decision before the UPC by filing an “application to annul or alter a decision of the office” with the UPC registry within two months of the decision (Unitary patent guide 144).

 

Case 3 (4 points)

In March 2018, a European patent application was filed in French. A European patent was granted in June 2023. Unitary effect has been registered and the proprietor has filed a statement concerning licences of right. The patent has also been validated in Spain and in Croatia; the European patent is still in force in these states.

The proprietor filed a request for limitation of the patent. The examining division has issued an interlocutory decision, indicating that the patent with amended claims and an amended description meets the requirements of the EPC. The mention of the limitation will be published in the last European Patent Bulletin of 2024.

1.      To maintain the existing patents, what translations must be filed, at which offices?

2.      Do any fees have to be paid? Fee amounts need not be mentioned.

Answer:

Spain

•                     A translation in Spanish of the whole specification as amended must be filed at the Spanish patent office.

•                     Time limit: within 3m from publication in last EPB of 2024 = last Wed. of 2024: 25/12/2024 + 3m  25/03/25 (Tue)

•                     A special fee is required, including an additional fee for pages of the translation in excess of 22.

Croatia

•                     A translation into Croatian of the amended claims must be filed at the Croatian patent office, plus a translation of the amended description into English.

•                     Time limit: within 3m from publication in EPB (see time limit calculation above)

•                     A special fee is required

 

Unitary patent: no translation needed and no special fee.

National renewal fees must also be paid to the Spanish Office and the Croation office, to keep the patent in force.

Pay renewal fee for UP to EPO by 31 March 2025. Amount reduced by 15% in view of statement concerning license of right.

Case 4 (7 points)

European application EP1 was filed online on 2 September 2024 without claiming priority.

You realise today, 10 October 2024, that priority from CN1 filed in Chinese on 31 August 2023 was not claimed.

1.      Explain why it is still possible to claim priority from CN1 and what steps must be taken.

2.      On the same day, you realise that, despite all due care, you filed the description of another application, instead of the priority application translated into English. It was intended that EP1 should have the same content as CN1.
How can you correct this? What will be the effect on the filing date?

3.      What is the consequence with regard to claiming priority from CN1? What action could be taken?

Answer:

1.      1. Addition of priority claim

·         Priority should be preferably be claimed at filing, but a declaration can be added until max 16 m. from earliest priority R.52(2). Thus: 31 August 2023 + 16 m -> 31 December 2024 (EPO closed) à Thursday 2 January 2025.

·         Steps: File a declaration with the EPO, which indicates the application number of CN1, the date of filing (31/08/2023) and the office where filed: CNIPA

.2.      Correction of “erroneously filed description” R.56a(3)

·         Inform the EPO that the wrong description has been filed and submit the correct one.

·         This can be done of own motion within 2m from filing 2/09/2024 + 2m à 2/11/2024 (Sat) extended to 4/11/2024 [R. 56a(3)]

·         Do this today and add the priority claim to CN1

·         Effect: the European filing date will be changed to the date when the correct description received, i.e. to 10/10/2024.

·         It is not possible to retain the original filing date using the provision of R. 56a(4), as priority of CN1 was not claimed at filing.

·         It is also possible to file a new EP application today containing the correct application documents and a priority claim to CN1 (see below).

3.      3. Entitlement to priority of CN1

·         The 12m priority period of CN1 expired on 31 Aug. 2024 (Sat) extended to 2 Sept. 2024, so EP1 was filed on time to validly claim priority.

·         The new European filing date is outside of this period, so the right to priority is lost.

·         This loss can be remedied by requesting re-establishment of the priority right under A 122 EPC.

Actions

·         Request RE in writing within 2m from expiry of the priority period, i.e. until 2/09/2024 + 2m à 2/11/2024 (Sat) extended to 4/11/2024

·         Pay RE Fee

·         Explain why incorrect description was filed, leading to the re-date, or the necessity to file a new application, and demonstrate that this occurred in spite of all due care.

 Case 5 (6 points)

Inventor Mr.TuIip, a Dutch national, filed Dutch national patent application NL-1 , which comprises 50 pages and includes 20 claims: all in the Dutch language.

The EPO established a search report at the request of the Netherlands Patent Office.

Mr Tulip then filed an international patent application WO-1 , claiming the priority of, and with the same content (description and claims in Dutch) as, NL-1.

The international publication of WO-1, with the international search report, comprises 45 pages: including 1 page of bibliographic data. The EPO acted as International Searching Authority International preliminary examination was requested in time; however, no amendments were made in the international phase. 30 months have elapsed since the date of filing of NL-1.

Mr Tulip now asks for an indication of the cost of entry into the European phase, i.e. how much he will have to pay in official fees over the next 8 months, if all formal requirements are met but expenses kept to a minimum. This will be his first application with the EPO. Mr Tulip expressly requests that no amendments be made before substantive examination.

Please name the fees that need to be paid, and state which reductions are available. It is sufficient to indicate how to calculate, but it is not necessary to indicate the amounts nor to provide full calculations.

Answer:

-         Filing fee: we will file online and pay the online filing fee, pay page fee for 10 pages; entitled to a 30% micro-entity reduction (we will file the declaration at the latest on the payment date)

-          Examination fee: entitled to

o   30% micro-entity reduction

o   a further 30% language fee reduction (file declaration and file the request for grant in Dutch language)

o   Since EPO was IPEA: also further 75% reduction.

Total reduction: 87.25%

-          Designation fee: reduced by 30% micro-entity reduction

-          No search fee: EPO was ISA

-          Claims fee for 5 claims (Can be paid on entry or within 6m from R 161/162 communication)

-          Pay renewal fee for 3rd and 4th year. Amount reduced by 30% micro-entity reduction

 

Case 6 (3 points)

Third-party observations were filed regarding a patent application. They were sent to the applicant with a communication (Form 2022) dated 22 November 2023.

1.      What did the applicant have to do and by what date?

2.      The EPO then sent a communication under Art. 94(3) dated 21 December 2023, setting a period of 4 months to respond. It was received by the applicant on 28 December 2023 The applicant requested a first extension of 2 months in time, and this was granted by a communication dated 19 April 2024 and received on 26 April 2024. The applicant wished to request a second time extension.
What did the applicant then have to do and by what date?

3.      The second request for extension of time was filed on the last possible date but was refused. The applicant was then informed by a noting of loss of rights that the application had been deemed to be withdrawn for failure to file a response in time. Both communications are dated 12 August 2024 and were received on 19 August 2024.
How can this be remedied and by what date?

Answer:

1.      The applicant may but does not need to comment on the observations. There is no time limit.

2.      Request extension at the latest on expiry of the period (21 Dec 2023 + 6 m. -> 21 June 2024 (Friday and all EPO offices are open)

3.      File a request for further processing (pay fixed fee of EUR 300, file response to Art.94(3) communication).
Latest: 12 August 2024 + 2 m. -> 12 Oct 2024 (Sat) -> 14 Oct 2024 (Monday and all EPO offices are open

4.      Comment: not possible to appeal decision to refuse further extension