The March 2024 EPO Examination Guidelines Update
The European Patent Office (EPO) has once again set the stage for innovation and intellectual property protection with the release of its updated Guidelines for Examination (EPC Guidelines), effective from 1st March 2024. This article demystifies the latest edition, ensuring you stay ahead in securing your intellectual property rights. The March 2024 edition of the EPC Guidelines has officially superseded its March 2023 predecessor, marking a significant milestone in the European Patent Convention’s application and patent examination procedures. Published in the Official Journal (OJ EPO 2024, A9), the notice of these updates highlights the evolution of examination practices and aligns them more closely with the current needs of inventors and the broader intellectual property community. A European Patent Attorney has prepared an extraction of the most relevant topic, which was updated in the Guidelines 2024.
Mastering the Unitary Patent: A Guide to Timely Requests
The journey to securing a European patent involves several critical steps, with the option to request a Unitary Patent being a pivotal one. This process ensures broader protection across European Union member states, making understanding its timing and requirements essential. Securing a Unitary Patent begins with a crucial step: filing a request for unitary effect. But timing is everything. Proprietors must act swiftly, as the request must be submitted to the European Patent Office (EPO) no later than one month following the publication of the grant notice in the European Patent Bulletin. This deadline is grounded in Rule 6 of the Rules relating to Unitary Patent Protection and is designed to streamline the process towards securing comprehensive patent protection across numerous European nations. Filing a request for unitary effect requires precision and awareness of the timelines. The request can be submitted as soon as the decision to grant the European patent is issued, using the designated EPO Form 2006A. This early filing offers a strategic advantage, allowing patent proprietors to prepare in advance. However, it’s important to note that such early requests will be held until the grant’s publication date in the European Patent Bulletin before they are processed and officially recorded in the Register for unitary patent protection.
Opting to file your request for unitary effect early, immediately after the grant decision, provides a buffer against unforeseen delays and ensures that you meet the critical one-month deadline. While these requests are queued until the publication date, early filing is a proactive measure, securing your place in line for unitary patent protection—the key to safeguarding your innovation across Europe.
Don’t navigate the complexities of unitary patent protection alone. Contact us , the European Patent Attorneys, today to ensure your patent strategy is aligned with the latest requirements and timelines.
Inventor Designation in Your European Patent Application
The inventor designation is a formal acknowledgment of the individuals behind the invention. This process involves officially naming the inventor or inventors in the patent application, a task that requires both precision and understanding of EPO regulations. It’s important to note that the EPO takes a particular stance regarding the verification of the inventor designation. While the office mandates the inclusion of this information, it does not scrutinize the accuracy of the details provided. Instead, the EPO focuses on verifying that the designated inventor is indeed a natural person, as clarified in the legal decision J 8/20. This unique approach underscores the EPO’s emphasis on the authenticity of the inventor’s identity over the minutiae of their contribution or credentials.
Priority Dates and Rights Transfer in European Patent Applications
In the realm of European patent applications, the concept of ‘priority date’ and the transfer of ‘priority rights’ hold significant importance for inventors and patent applicants. Whether you’re navigating the aftermath of a previous application or transferring priority rights, understanding these aspects under the European Patent Convention (EPC) is crucial. This guide demystifies these topics, shedding light on recent legal decisions and their implications for your patent strategy. A priority date is essentially a timestamp for your invention, determining its novelty in the eyes of patent offices. Even if your initial application is withdrawn or refused, the contents that established its filing date can secure this crucial priority date for future applications. This principle ensures that inventors do not lose their early standing due to procedural outcomes. Transferring the ‘priority right’ – the ability to benefit from an earlier filing date in subsequent applications – is a nuanced process. Importantly, the transfer of these rights is assessed under the EPC, independent of any national laws. Notably, legal rulings (G 1/22 and G 2/22) highlight that the EPC does not specify formal requirements for this transfer. When multiple inventors initially file an application, all must either be part of the subsequent European patent application or have transferred their priority rights to its applicant. However, a strong presumption exists that applicants claiming priority are rightfully entitled to do so. The burden of disproving this entitlement falls on those challenging it. In the case of joint applicants for an international application under the Patent Cooperation Treaty (PCT), including the original priority applicant, a shared intention to rely on the priority right is assumed. This stands unless there are substantial reasons to believe otherwise, fostering a collaborative approach to patent filings.
Decision of G1/22 and G2/22
The European Patent Office is competent to assess whether a party is entitled to claim priority under Article 87(1) EPC.
There is a rebuttable presumption under the autonomous law of the EPC that the applicant claiming priority in accordance with Article 88(1) EPC and the corresponding Implementing Regulations is entitled to claim priority.
The rebuttable presumption also applies in situations where the European patent application derives from a PCT application and/or where the priority applicant(s) are not identical to the subsequent applicant(s).
In a situation where a PCT application is jointly filed by parties A and B, (i) designating party A for one or more designated States and party B for one or more other designated States, and (ii) claiming priority from an earlier patent application designating party A as the applicant, the joint filing implies an agreement between parties A and B allowing party B to rely on the priority, unless there are substantial factual indications to the contrary.
Additional Page Fees for EURO-PCT Applications Entering the European Phase
For Euro-PCT applications entering into the European phase, an additional fee forms part of the filing fee. This must be settled within the 31-month period specified in Rule 159(1). The calculation is primarily based on the content of the international application as it’s published, including descriptions, claims, drawings, and any amendments made under Articles 19 and/or 34 of the PCT.
The additional fee takes into account the pages of the description, claims, drawings, and one page for the bibliographic data with the abstract. Amendments under Articles 19 and/or 34 PCT are also considered if the European phase proceedings are to be based on them. Amendments to your application can affect the calculation of the additional fee, depending on the publication language of the international application.
For the applications Published in EPO Languages, the fee is based on the published application, with any amendments replacing the original pages. Applications Published in Non-EPO Languages: If amendments are made, the calculation basis shifts to the translated application required under Article 153(4) and Rule 159(1)(a), ensuring the fee is calculated accurately despite language differences. It’s crucial to note that the EPO distinguishes between substantive amendments and mere reformatting intended to reduce the fee. Explicitly stating the nature of these changes on entry into the European phase can influence the additional fee calculation.
Managing the nuances of Euro-PCT applications requires expertise and precision. As European Patent Attorneys, we’re here to guide you through each step, ensuring your innovations are protected efficiently and effectively. Reach out to us for tailored support on your patent application process.
Simplifying Signature Requirements for EPO Electronic Filings
Navigating the European Patent Office’s (EPO) electronic filing system is a critical step in securing your intellectual property rights. A crucial aspect of this process is understanding the signature requirements for documents filed electronically. Let’s break down the types of signatures accepted by the EPO to ensure your filings are both valid and efficient.
Types of Signatures Accepted by the EPO:
Facsimile Signature: This is essentially a digital reproduction of your handwritten signature. It’s accepted across various EPO filing platforms, including EPO Online Filing, Online Filing 2.0, the EPO web-form filing service, and the EPO Contingency Upload Service.
Text-String Signature: A unique sequence of characters (surrounded by forward slashes, e.g., /John Doe/) selected by you to authenticate and sign your documents. This form of signature is widely accepted, including for procedural actions performed in MyEPO Portfolio.
Enhanced Electronic Signature: A more secure form of electronic signature, either issued or recognized by the EPO. This signature type adds an extra layer of security to your filings.
For electronic filings through EPO Online Filing, options include facsimile, text-string, or enhanced electronic signatures.
Online Filing 2.0, the EPO web-form filing service, and the EPO Contingency Upload Service accept facsimile and text-string signatures.
Actions in MyEPO Portfolio specifically require a text-string signature.
Electronic Signature on Assignment Documents:
For assignment documents filed electronically, the EPO specifies further guidelines (see E-XIV, 3), ensuring the validity and recognition of your intellectual property transfers.
When filing documents via fax, a clear reproduction of the filer’s signature is deemed sufficient. It’s essential that the filer’s name and position are identifiable from the signature itself, as per the EPO’s President’s decision on 20 February 2019.
The nuances of patent filing can be complex, but you don’t have to navigate them alone. Our team is here to help guide you through the EPO’s electronic filing requirements and ensure your innovations are protected with the proper signatures. Contact us today for personalized support.
