Publication of the application
Publication date
Principle
When a patent application is filed, it is not published immediately.
However, after a period of 18 months (from the priority date or, failing that, the filing date of the application), the application will be automatically published (A93(1)(a) EPC).
This publication normally occurs on the first Wednesday after the expiry of this period (« Publication dates 1997/1998« , OJ 1997, 542, point 3). However, a delay in publication is entirely possible.
This date is notified to the applicant when the publication number is communicated to them (R69(1) EPC) and is recorded in the EPR (R143(1)(l) EPC).
Applicant information
At the end of the technical preparations for publication, the applicant is informed and provided with (Guidelines A-VI 1.1):
- the publication date,
- the publication number.
This notification is normally issued approximately 4 weeks before publication (« Notice from the European Patent Office dated 25 April 2006 concerning the withdrawal of the application to prevent publication« , OJ 2006, 406, point 3).
Early publication
At the applicant’s request
Of course, the applicant may always request that their application be published early (A93(1)(b) EPC).
The purpose is most often:
- to bring the application into the state of the art as quickly as possible under A54(2) EPC for most countries in the world;
- to benefit from early provisional protection (A67 EPC).
This early publication is only possible if:
- a request is submitted;
- the filing and search official fees have been paid (Guidelines A-VI 1.1).
Due to early grant of the European patent
Furthermore, if the EPO decides to grant a patent before the expiry of the 18-month period (which practically never happens), there will also be an early publication (A93(2) EPC).
No publication
Cases of non-publication
There will be no publication if the application has been finally rejected or has been withdrawn or is deemed withdrawn before the end of the technical preparations (R67(2) EPC).
If the application is deemed withdrawn, but the applicant has requested a decision under R112(2) EPC, the application will still be published (Guidelines A-VI 1.2 and « Notice dated 28 August 1990 concerning the publication of European patent applications which are not yet finally deemed withdrawn« , OJ 1990, 455).
End of technical preparations
Normally, it is necessary for the preceding event (refusal, withdrawal, etc.) to occur before the end of the technical preparations (under R67(1) EPC, the President determines when these preparations are deemed to be completed: « Decision of the President of the European Patent Office, dated 12 July 2007, concerning the completion of technical preparations for the publication of the European patent application« , OJ 2007, Special Edition No. 3, D.1), i.e., before the end of the day preceding a period of 5 weeks before the expiry of the 18-month priority period.
For the calculation of the 5 weeks, R131(5) EPC must be consulted (i.e., the day bearing the same name).
R134 EPC does not apply to the end of technical preparations, as this is not a time limit.
In any event, the end of technical preparations is notified to the applicant approximately 4 weeks before publication, at the same time as the publication number and the scheduled publication date (Guidelines A-VI 1.1 and « Notice from the European Patent Office dated 25 April 2006 concerning the withdrawal of the application to prevent publication« , OJ 2006, 406).
In practice, it is often possible to prevent the publication of the patent application if the application is explicitly withdrawn 2 weeks before the publication date (though nothing is guaranteed, « Notice from the European Patent Office dated 25 April 2006 concerning the withdrawal of the application to prevent publication« , OJ 2006, 406): the EPO will do its best to avoid publication but without guarantee (Guidelines A-VI 1.2).
Conditional withdrawal
It is possible to request a « conditional » withdrawal to avoid any unpleasant surprises (« Notice from the European Patent Office dated 25 April 2006 concerning the withdrawal of the application to prevent publication« , OJ 2006, 406): withdrawal conditional upon the non-publication of the application.
Thus, if the EPO nevertheless publishes the application, it is still possible to continue the grant procedure with this application.
No other reservations are possible (J11/80).
Withdrawal declaration
The withdrawal must be explicit and must be the sole purpose of a letter (so that it is easily identifiable by the EPO, « Notice from the European Patent Office dated 25 April 2006 concerning the withdrawal of the application to prevent publication« , OJ 2006, 406).
This declaration may be sent by fax.
Publication despite withdrawal
It may happen (e.g., EPO error, withdrawal after completion of technical preparations) that, despite the effective withdrawal of the application, the application is still published by the EPO.
In this latter situation:
- this publication cannot be considered as a publication under A54(3) EPC (J5/81 and Guidelines G-IV 5.1.1): it will only be a simple publication under A54(2) EPC;
- the right to the patent, provided for in A60(2) EPC, may still be granted to a second person who filed afterward (but before publication, of course);
- the provisional protection under A67(4) EPC will not apply;
- the application cannot be considered as a national prior right under A139(1) EPC (J5/81);
- file inspection is not possible (J5/81).
Technical preparations for publication
The technical preparations (R67(1) EPC) are deemed to be completed on the day preceding a period of 5 weeks before the expiration of the 18-month period mentioned above (« Decision of the President of the European Patent Office, dated 12 July 2007, concerning the completion of technical preparations for the publication of the European patent application« , OJ 2007, Special Edition No. 3, D.1).
Content of the publication
Principle: A1-type publication
The « A1 » publication contains (R68(1) EPC):
- if filed in an official language:
- the description (of course),
- the claims,
- the drawings, and
- the abstract as filed,
- if filed in a non-official language:
- their translation into the language of the proceedings (A14(5) EPC),
- the European search report (ESR) if it is available before the completion of the technical preparations,
- the name of the inventors, if they have not waived this right under R20(1) EPC;
Of course, if missing parts have been provided after the filing, these will be included in the publication (Guidelines A-VI 1.3).
If corrections under R139 EPC have been made to the application before the completion of the technical preparations, these will also be present in the publication (Guidelines A-VI 1.3). If a correction is pending, this is mentioned on the title page of the publication (Guidelines A-VI 1.3).
If the ESR cannot be published by this date, it will be published separately (A3-type publication, R68(1) EPC, last sentence).
Furthermore (R68(4) EPC):
- if no claims were filed at the time of filing, this is indicated in the publication,
- if the claims have been amended since the filing date, both sets of claims are published.
Type of publication
For applications, there are 4 types of publication (Guidelines B-X 7):
- A1: application and ESR,
- A2: application alone,
- A3: ESR alone,
- A4: supplementary search report (A153(7) EPC).
For corrections (« Information relating to the publication of European patent documents – New system for publishing corrections to A and B documents« , OJ 2001, 117):
- A8: corrected title of an A document,
- A9: complete reprint of an A document,
- B8: corrected title of a B document,
- B9: complete reprint of a B document.
Provisional protection
Start of protection
The publication of the application (and not the mention of the publication in the Bulletin) provides provisional protection in the designated countries (A67(1) EPC).
It is entirely possible to request early publication (A93(1)(b) EPC).
For PCT applications, the publication is considered to be (A153(3) EPC and A153(4) EPC):
- that of the PCT application, if the language of publication is an official language of the EPO (i.e., French, English, German);
- the publication by the EPO of a translation of the application, otherwise.
Scope of protection
The scope of provisional protection is determined by the claims as published (A67(1) EPC and A69(2) EPC).
In the event that the patent application has been limited after publication (with a view to obtaining the final grant), the scope of provisional protection will be retroactively amended (A69(2) EPC). However, if the scope has been extended, the scope of provisional protection will remain that defined by the claims as of the publication date.
Of course:
- if, prior to grant, the patent application is withdrawn or refused, the provisional protection will be retroactively destroyed (A67(4) EPC).
- if the patent application or the patent is revoked, limited, or declared invalid, the provisional protection will be retroactively destroyed (A68 EPC).
Countries granting this protection
The countries granting such protection are the designated contracting states in the application (A67(1) EPC).
Since normally all countries are designated in the request for grant, this somewhat simplifies the matter (A79(1) EPC).
If a designation is withdrawn in the application, the provisional protection will be retroactively destroyed for that state (A67(4) EPC).
For extension states, the corresponding extension agreements must be specifically consulted.
Translation Requirements
If the language of the proceedings is not an official language of the state in question, that state may require that a translation of the claims (A67(3) EPC) be:
- made available to the public; and/or
- served on the alleged infringer.
Note that not all countries offer both options. Some countries (Albania) require both service on the alleged infringer and public availability.
This language may be one of the official languages of the state at the applicant’s choice, but the state may not permit all its official languages (e.g., Luxembourg requires a translation into German or French, but not Luxembourgish).
Type of Protection
Subject to any translation required by national law (A67(3) EPC), this protection allows for (A67(2) EPC):
- the protection conferred by a national patent application (e.g., San Marino),
- but at a minimum, a reasonable compensation (which is, in fact, what most national laws provide, except for San Marino).