Beginning January 1, 1996 the period within which a translation of a European patent must be filed in a National Patent Office shall be a minimum of 3 months from the date of grant of the patent. This will require a change in Switzerland which currently requires filing of a translation no later than the actual date of grant of the European patent.
All of the other changes will come into effect on June 1, 1995. They are as follows:
1) Assignment of a European patent application will now be recorded upon submission to the Patent Office of "documents satisfactory to the European Patent Office that the transfer has taken place", rather than requiring submission of specified documents as was the case previously.
2) The requirement that units of measure shall be in the metric system is replaced by the requirement that units of measure shall be in the SI system. It will be recalled that several metric units are not part of the SI system and an Appeal Board has recently held that the previous wording permitted the use of non-SI units such as centistokes (see our Information Letter N.S. 182). This possibility will cease on June 1, 1995.
3) Fees will be charged for incorporating the text of a previously filed European application or PCT application for which the EPO is the Receiving Office into the file of a subsequent application claiming priority from it.
4) The law relating to amendments during oppositions is amended to clarify that such amendments shall be permitted if "occasioned by the grounds of opposition" even if the particular ground in question was not one which was invoked by the opponent. Thus, if a patentee discovers some additional prior art during an opposition, even if this is not relied upon by the opponent, an amendment to deal with that art should now be permitted.
5) The regulations relating to preparation for oral proceedings have been revised to try to minimize late filing of documents.
6) Restrictions on amendments to claims are imposed to provide that "amended claims may not relate to unsearched subject matter which does not combine with the originally claimed invention or group inventions to form a single general inventive concept." This change could increase the problems that already exist in making amendments during prosecution and must be treated with care.
7) In cases where claims differ for various contracting states, the European Patent Office may permit different descriptions and drawings for those different contracting states.
8) In applications derived from PCT applications where the priority documents are not received in time through official channels, the European Patent Office will invite the applicant to submit a copy of the priority documents.
2) The requirement that units of measure shall be in the metric system is replaced by the requirement that units of measure shall be in the SI system. It will be recalled that several metric units are not part of the SI system and an Appeal Board has recently held that the previous wording permitted the use of non-SI units such as centistokes (see our Information Letter N.S. 182). This possibility will cease on June 1, 1995.
3) Fees will be charged for incorporating the text of a previously filed European application or PCT application for which the EPO is the Receiving Office into the file of a subsequent application claiming priority from it.
4) The law relating to amendments during oppositions is amended to clarify that such amendments shall be permitted if "occasioned by the grounds of opposition" even if the particular ground in question was not one which was invoked by the opponent. Thus, if a patentee discovers some additional prior art during an opposition, even if this is not relied upon by the opponent, an amendment to deal with that art should now be permitted.
5) The regulations relating to preparation for oral proceedings have been revised to try to minimize late filing of documents.
6) Restrictions on amendments to claims are imposed to provide that "amended claims may not relate to unsearched subject matter which does not combine with the originally claimed invention or group inventions to form a single general inventive concept." This change could increase the problems that already exist in making amendments during prosecution and must be treated with care.
7) In cases where claims differ for various contracting states, the European Patent Office may permit different descriptions and drawings for those different contracting states.
8) In applications derived from PCT applications where the priority documents are not received in time through official channels, the European Patent Office will invite the applicant to submit a copy of the priority documents.
April 1995 Index