Tag: amendments

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Adversarial and non-adversarial proceedings

Opposition, limitation or revocation procedure

At the request of the proprietor, the European patent may be revoked or be limited by an amendment of the claims. The request shall be filed with the European Patent Office in accordance with the Implementing Regulations. It shall not be deemed to have been filed until the limitation or revocation fee has been paid.

The request may not be filed while opposition proceedings in respect of the European patent are pending.

The European Patent Office shall examine whether the requirements laid down in the Implementing Regulations for limiting or revoking the European patent have been met. If the European Patent Office considers that the request for limitation or revocation of the European patent meets these requirements, it shall decide to limit or revoke the European patent in accordance with the Implementing Regulations. Otherwise, it shall reject the request. The decision to limit or revoke the European patent shall apply to the European patent in all the Contracting States in respect of which it has been granted. It shall take effect on the date on which the mention of the decision is published in the European Patent Bulletin. 

If the European patent is limited, the European Patent Office shall publish the amended specification of the European patent as soon as possible after the mention of the limitation has been published in the European Patent Bulletin.

Within nine months of the publication of the mention of the grant of the European patent in the European Patent Bulletin, any person may give notice to the European Patent Office of opposition to that patent, in accordance with the Implementing Regulations. Notice of opposition shall not be deemed to have been filed until the opposition fee has been paid. The opposition shall apply to the European patent in all the Contracting States in which that patent has effect. Opponents shall be parties to the opposition proceedings as well as the proprietor of the patent. Where a person provides evidence that in a Contracting State, following a final decision, he has been entered in the patent register of such State instead of the previous proprietor, such person shall, at his request, replace the previous proprietor in respect of such State.

Opposition may only be filed on the grounds that: 

(a) the subject-matter of the European patent is not patentable;

(b) the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

If the opposition is admissible, the Opposition Division shall examine, in accordance with the Implementing Regulations, whether at least one ground for opposition prejudices the maintenance of the European patent. During this examination, the Opposition Division shall invite the parties, as often as necessary, to file observations on communications from another party or issued by itself.

If the Opposition Division is of the opinion that at least one ground for opposition prejudices the maintenance of the European patent, it shall revoke the patent. Otherwise, it shall reject the opposition. 

If the Opposition Division is of the opinion that, taking into consideration the amendments made by the proprietor of the European patent during the opposition proceedings, the patent and the invention to which it relates 

(a) meet the requirements of this Convention, it shall decide to maintain the patent as amended, provided that the conditions laid down in the Implementing Regulations are fulfilled; 

(b) do not meet the requirements of this Convention, it shall revoke the patent. 

If the European patent is maintained as amended, the European Patent Office shall publish a new specification of the European patent as soon as possible after the mention of the opposition decision has been published in the European Patent Bulletin.

Each party to the opposition proceedings shall bear the costs it has incurred, unless the Opposition Division, for reasons of equity, orders, in accordance with the Implementing Regulations, a different apportionment of costs. 

The procedure for fixing costs shall be laid down in the Implementing Regulations. Any final decision of the European Patent Office fixing the amount of costs shall be dealt with, for the purpose of enforcement in the Contracting States, in the same way as a final decision given by a civil court of the State in which enforcement is to take place. Verification of such decision shall be limited to its authenticity. 

Any third party may, in accordance with the Implementing Regulations, intervene in opposition proceedings after the opposition period has expired, if the third party proves that  

(a) proceedings for infringement of the same patent have been instituted against him, or 

(b) following a request of the proprietor of the patent to cease alleged infringement, the third party has instituted proceedings for a ruling that he is not infringing the patent. 

An admissible intervention shall be treated as an opposition. 

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European Patent Validation

Effects of the European patent in Contracting State

The patent granted by the European Patent Office shall have the same effects, as the national patents granted in Contracting states.

The European patent shall have the effects in the Contracting State as from the date, when the grant of the European patent was announced in the European Patent Bulletin.

The proprietor of the patent shall be obliged to

  • submit to the Office the translation of the patent specification to the national language within 3 months since this date, and

  • to pay the administrative fee for the publication

In the same time, the proprietor of the patent shall be obliged to

  • submit to the Office the address in the Contracting State, where the official notifications concerning his patent are to be sent.


The Office shall announce the grant of the European patent in the Bulletin and publish the translation of the European patent specification.

If the translation of the European patent specification to the national language is not submitted within the period specified above, the proprietor of the European patent may submit it in the additional time limit of 3 months, provided that he will pay the administrative fee according to the special regulation.

If the translation of the European patent specification to the national language is not submitted even within the additional time limit according to the above paragraph, the European patent shall be considered in the Contracting State as null and void from the outset.

After the announcement of the grant of the European patent in the European Patent Bulletin, the Office shall enter the European patent to the National Register of European patents with the data.


Extent of protection from the European patent

The text of the European patent in the language of the proceedings before the European Patent Office shall be decisive for the determination of the extent of protection conferred by the European patent; nevertheless, if the extent of protection conferred by the translation of the patent specification, submitted to the National Office of the Contracting State is narrower than in the language of proceedings, third parties can refer to this translation.

The proprietor of a European patent is entitled to submit to the Office the corrected translation of the European patent specification to the national language. The corrected translation shall have effects instead of the original translation as from the publication of the corrected translation by the National Office; the proprietor of the European patent shall pay the fee for the publication according to special regulations.

The rights of third persons, which on the territory of the Contracting State in good faith have used or have realised serious and effective preparations to use the subject-matter, which pursuant to the translation valid in the period before the publication of the corrected translation by the National Office was not covered by the extent of this European patent, are not affected by the delivery of the new translation.


Prohibition of the simultaneous protection

If the national patent is granted to the invention, to which the European patent has been granted with the same right of priority to the same proprietor of the patent or his successor in title, the national patent shall cease to have effect to the extent that it is identical with the European patent, from the date, on which the period for filing the notice of opposition to the European patent expires without such notice being filed, or the date of entry into force of the decision, by which the European patent has been maintained in the opposition proceedings.

The national patent shall not have effects to the extent that it is identical with the European patent, if it was granted after the expiry of the period for filing the notice of opposition to the European patent without such notice being filed, or after the date of entry into force of the decision, by which the European patent has been maintained in the opposition proceedings.

The provisions mentioned in the above two paragraphs shall not be affected by the revocation of the European patent.

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Examination of European patent application

In proceedings before it, the European Patent Office shall examine the facts of its own motion; it shall not be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. The European Patent Office may disregard facts or evidence which are not submitted in due time by the parties concerned.

In proceedings before the European Patent Office the means of giving or obtaining evidence shall include the following: 

(a) hearing the parties; 

(b) requests for information; 

(c) production of documents; 

(d) hearing witnesses; 

(e) opinions by experts; 

(f) inspection; 

(g) sworn statements in writing.

The European Patent Office may, in accordance with the Implementing Regulations, invite the applicant to provide information on prior art taken into consideration in national or regional patent proceedings and concerning an invention to which the European patent application relates. If the applicant fails to reply in due time to an invitation, the European patent application shall be deemed to be withdrawn.

The European Patent Office shall examine, in accordance with the Implementing Regulations, whether the application satisfies the requirements for the accordance of a date of filing.

If a date of filing cannot be accorded, the application shall not be dealt with as a European patent application.

If the European patent application has been accorded a date of filing, the European Patent Office shall examine, in accordance with the Implementing Regulations as well as any other requirement laid down in the Implementing Regulations.

Where the European Patent Office in carrying out the examination notes that there are deficiencies which may be corrected, it shall give the applicant an opportunity to correct them.

If any deficiency noted in the examination is not corrected, the European patent application shall be refused unless a different legal consequence is provided for by this Convention. Where the deficiency concerns the right of priority, this right shall be lost for the application.

The European Patent Office shall, in accordance with the Implementing Regulations, draw up and publish a European search report in respect of the European patent application on the basis of the claims, with due regard to the description and any drawings.

The European Patent Office shall, in accordance with the Implementing Regulations, examine on request whether the European patent application and the invention to which it relates meet the requirements of this Convention. The request shall not be deemed to be filed until the examination fee has been paid.

If no request for examination has been made in due time, the application shall be deemed to be withdrawn.

If the examination reveals that the application or the invention to which it relates does not meet the requirements of the Convention, the Examining Division shall invite the applicant, as often as necessary, to file his observations and to amend the application.

If the applicant fails to reply in due time to any communication from the Examining Division, the application shall be deemed to be withdrawn.

An applicant claiming priority shall file a copy of the results of any search carried out by the authority with which the previous application was filed together with the European patent application, in the case of a Euro-PCT application on entry into the European phase, or without delay after such results have been made available to him. The copy shall be deemed to be duly filed if it is available to the European Patent Office and to be included in the file of the European patent application under the conditions determined by the President of the European Patent Office. The European Patent Office may invite the applicant to provide, within a period of two months, information on prior art.

Proceedings before the European Patent Office shall be interrupted: 

(a) in the event of the death or legal incapacity of the applicant for or proprietor of a European patent or of the person authorised by national law to act on his behalf. To the extent that the above events do not affect the authorisation of a representative as appointed, proceedings shall be interrupted only on application by such representative;

(b) in the event of the applicant for or proprietor of a patent, as a result of some action taken against his property, being prevented by legal reasons from continuing the proceedings; 

(c) in the event of the death or legal incapacity of the representative of an applicant for or proprietor of a patent, or of his being prevented for legal reasons resulting from action taken against his property from continuing the proceedings. 

When, in the cases, the European Patent Office has been informed of the identity of the person authorised to continue the proceedings, it shall notify such person and, where applicable, any third party, that the proceedings will be resumed as from a specified date.

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