Designations
Designation of States
Since December 13, 2007, all contracting states are deemed to be designated in the request for grant (A79(1) EPC).
Previously, they had to be explicitly designated (A79(1) EPC73).
States That Can Be Designated
If the filing date of an application precedes the accession date of a state, that application cannot designate that state (A166 EPC).
For a PCT application, it is necessary that the international application designates the states that will be designated in the European application and that, on the date of the international filing, that state had acceded to the EPC (J30/90).
Normally, it is not possible to request a deferral of the filing date on the grounds of obtaining a patent for a newly acceded EPC member state (J14/90).
However, there are transitional provisions that allowed, if the application was filed in the month preceding the accession and if an express request was made at the time of filing, to assign the accession date as the filing date:
- for SK, BG, CZ, and EE: accession on July 1, 2002;
- for SI: accession on December 1, 2002;
- for HU: accession on January 1, 2003;
- for RO: accession on March 1, 2003;
- for PL: accession on March 1, 2004;
- for IS: accession on November 1, 2004;
- for LT: accession on December 1, 2004;
- for LV: accession on July 1, 2005;
- for MT: accession on March 1, 2007;
- for NO and HR: accession on January 1, 2008;
- for MK: accession on January 1, 2009;
- for SM: accession on July 1, 2009;
- for AL: accession on May 1, 2010;
- for RS: accession on October 1, 2010.
Designation Official Fees
From April 1, 2009
A single designation official fee is due (A2(1).3 RFEE): [montant_epo default= »555 € » name= »A2(1).3 RRT »].
Before April 1, 2009
An official fee is due for each designated state (A2(2).3 RFEE): [montant_epo default= »95 € » name= »A2(2).3 RRT »].
However, if 7 official fees are paid, the official fees for all states are deemed to be paid.
Switzerland and Liechtenstein count as only one state for the purpose of calculating designation official fees (A149(1) EPC and A2(2).3bis RFEE).
Time Limits
The time limit for paying the designation official fee is 6 months from the date of publication of the European search report (A79(2) EPC together with R39(1) EPC).
However, the designation official fee is due on the date of publication of the European search report (Guidelines A-X 5.2.2): this means that if you pay this official fee at the time of filing, you will have to pay the difference if there is a change in the fee schedule.
This time limit is notified to the applicant in the communication provided for under R69(1) EPC (the designation official fee is also mentioned, Guidelines A-VI 2.1).
Sanction for non-payment
If the designation fee is not paid within the time limits, the application is deemed withdrawn (A79(2) EPC together with R39(2) EPC).
A121 EPC is applicable.
The loss of rights occurs upon expiry of the 6-month time limit (G4/98, Guidelines A-III 11.3.4) and thus neither retroactively nor at the end of the time limit for requesting further processing.
Competence
The Examining Division is competent (Guidelines C-II 4) even if this task has been entrusted to formalities officers, in accordance with R11(3) EPC (« Decision of the President of the European Patent Office dated 12 December 2013 on entrusting to employees who are not examiners certain tasks incumbent on the Examining or Opposition Divisions« , OJ 2014, A6, point 19).
Divisional applications
The designation fee must be paid within a time limit of 6 months from the date of publication of the search report drawn up for this divisional application (R36(4) EPC).
Otherwise, the application is deemed withdrawn (R39(2) EPC).
A121 EPC is applicable.
Countries not designated in the earlier application cannot be reintroduced (A76(2) EPC, G4/98 and Guidelines A-IV 1.3.4).
Withdrawal of a designation
It is possible to withdraw a designation at any time up to grant (A79(3) EPC, Guidelines A-III 11.2.4), even upon filing (e.g., to avoid issues with earlier national rights, A139(3) EPC).
Withdrawal and refund of fee
Furthermore:
- for applications filed before 1 April 2009, if a designation is withdrawn after the corresponding designation fee has been paid, it is not refunded (A79(3) EPC73);
- for applications filed after 1 April 2009, if all designations are withdrawn after the designation fee has been paid, it is not refunded (R39(3) EPC).
Withdrawal of all designations
The withdrawal of all designated states is equivalent to the withdrawal of the application, and the applicant is informed thereof (R39(2) EPC or A79(3) EPC73).
Redesignation
Upon withdrawal, the withdrawal is final.
It is not possible to revive a designation, even by paying the designation fee (Guidelines A-III 11.3.8 for applications filed before 1 April 2009 or Guidelines A-III 11.2.4 otherwise).
Suspension of proceedings
It is not possible to withdraw a designation from the day on which a third party provides evidence that they have initiated proceedings to have their right to the patent recognized under A61 EPC (R15 EPC) and that third party does not consent to the continuation of the proceedings (R14(1) EPC).
Correction of a withdrawal
It is possible to correct an erroneous withdrawal under R139 EPC, but this must comply with certain conditions (J10/87):
- at the time of the cancellation of the withdrawal, the withdrawal has not been officially made known to the public;
- the withdrawal is due to an excusable oversight;
- the cancellation does not cause a significant delay in the proceedings;
- the EPO has ensured that third parties who may have become aware of the withdrawal by consulting the file are protected (e.g., no request for file inspection has been made).
Extensions
Legal basis and application of the EPC
Extension agreements are concluded by the President of the EPO with the authorization of the Administrative Council under A33(4) EPC.
Apart from this, the EPC never mentions « extension states ».
It is therefore the implementing regulations of these agreements under national law that apply. Thus,
- no remedy provided by the EPC is applicable (J14/00);
- decisions of the examining or receiving division concerning the designation of an extension state are not subject to appeal (J14/00, J9/04, J2/05);
- the correction under R139 EPC is not applicable here (as stated in the extension agreements).
Extension states
The extension states are:
- Slovenia (SI):
- from March 1, 1994, until filings made before December 1, 2002;
- it is now a contracting state;
- OJ 1994, 75.
- Lithuania (LT):
- from July 5, 1994, until filings made before December 1, 2004;
- it is now a contracting state;
- OJ 1994, 527.
- Latvia (LV):
- from May 1, 1995, until filings made before July 1, 2005;
- it is now a contracting state;
- OJ 1995, 345.
- Albania (AL):
- from February 1, 1996, until filings made before May 1, 2010;
- it is now a contracting state;
- OJ 1996, 82.
- Romania (RO):
- from October 15, 1996, until filings made before March 1, 2003;
- it is now a contracting state;
- OJ 1996, 601.
- North Macedonia (MK):
- from November 1, 1997, until filings made before January 1, 2009;
- it is now a contracting state;
- OJ 1997, 538.
- Republic of Croatia (HR):
- from April 1, 2004, until filings made before January 1, 2008;
- it is now a contracting state;
- OJ 2004, 117.
- Serbia (RS):
- from November 1, 2004, until filings made before October 1, 2010;
- it is now a contracting state;
- OJ 2004, 563.
- Bosnia and Herzegovina (BA):
- from December 1, 2004;
- OJ 2004, 619.
- Montenegro (ME):
- from March 1, 2010;
- OJ 2010, 10.
Euro-PCT application
To designate an extension state in a Euro-PCT application, that state must be designated in the PCT application (Guidelines A-III 12.1).
Upon filing, all extension states are deemed to be designated (Guidelines A-III 12.1).
Designation fee
A designation fee must be paid to the EPO for each extension state.
Amount
This official fee is identical for all countries ([montant_epo default= »102 € » name= »Designation fee for extensions »]) and is provided for in each of the extension agreements (see, for example, for Slovenia, « Extension of the effects of European patents to Slovenia« , OJ 1997, 75, A3 or, for Montenegro, « Extension of the effects of European patents to Montenegro« , OJ 2010, 10 point 4.2).
Time limits
The time limits are provided for in each of the extension agreements but are all identical (Guidelines A-III 12.2):
- for a standard European application:
- 6 months from the date of publication of the mention of the European search report;
- for a Euro-PCT application, the later of:
- 31 months from the filing date (or, where applicable, the earliest priority date);
- 6 months from the date of publication of the mention of the international search report.
Failure to pay
If an extension official fee is not paid, the following situations may arise (Guidelines A-III 12.2):
- if all designation official fees have been duly paid:
- no notification will be sent to the applicant;
- the applicant has an additional 2-month period to pay the omitted extension official fee and a surcharge (i.e., from the expiry of the initial time limit) (modeled in the extension agreements on the former R85bis(2) EPC73);
- the surcharge is 50% of the extension official fee (provided for in the extension agreements).
- if a designation official fee has not been paid:
- a notification will be sent pursuant to R112(1) EPC;
- the applicant may pay the extension official fee and a surcharge (« Notice from the European Patent Office dated 2 November 2009 concerning the reintroduction of an additional period for payment of extension fees« , OJ 2009, 603):
- within a period of 2 months from the expiry of the initial time limit (« reintroduced additional period » modeled on the former R85bis(2) EPC73);
- within a period of 2 months following the notification of loss of rights (whether further processing is requested or not, Guidelines A-III 12.2);
- the surcharge is 50% (« Notice from the European Patent Office dated 2 November 2009 concerning the reintroduction of an additional period for payment of extension fees« , OJ 2009, 603 if no further processing is required, A2(1).12 RFees otherwise).
Withdrawal of an extension
An extension may be withdrawn at any time, but the extension official fee is not refunded (Guidelines A-III 12.3).
Divisional applications
It is not possible to reintroduce extension countries in a divisional application if it is not possible to extend the earlier application to those extension countries at the filing date of the divisional application (Guidelines A-III 12.1, i.e., if the time limit for paying the extension official fees had expired at the time of filing the divisional application).
Special case of Morocco
Principle
Applications filed as from 1 March 2015 may additionally designate Morocco, even though it is not formally a party to the European Patent Convention (« Validation of European patents in Morocco (MA) as from 1 March 2015« , OJ 2015, A20).
Conditions: official fee and time limit
To validly file a request for validation, an official fee of 240€ must be paid (« Decision of the President of the European Patent Office dated 5 February 2015 setting the amount of the validation fee for European patent applications and European patents in Morocco« , JO 2015, A18):
- for a standard European application:
- within 6 months from the date of publication of the European search report in the Bulletin (« Validation of European patents in Morocco (MA) as from 1 March 2015« , JO 2015, A20);
- for a Euro-PCT application:
- within 6 months from the date of international publication of the international search report (« Validation of European patents in Morocco (MA) as from 1 March 2015« , JO 2015, A20 together with A153(6) EPC together with R70(1) EPC);
- if the above time limit expires before entry into the national phase, upon entry into the national phase.
The validation fee may still be validly paid within an additional period of 2 months, subject to payment of a surcharge equal to 50% of the fee amount within this period.
Effects
Validated European patent applications and European patents provide, in Morocco, essentially the same protection as European patents in the EPC contracting states (« Validation of European patents in Morocco (MA) as from 1 March 2015« , JO 2015, A20).