First of all, it is necessary to determine the person who actually has the right to file the patent application: for that, I invite you to consult the article "People who can apply".
Chapter 1. How to recognize the flight?
In order to know who is entitled to file a patent application, the EPO is a little cautious and does not dare to pronounce itself: thus, the EPO requests that a competent national jurisdiction decide this issue.
Section 1.1. The competent courts
- the courts of the state Contracting designated in writing by the parties (A5 (1) PR). This situation is possible between an employee and an employer only if the national law governing the employment contract authorizes it (A5 (2) PR),
- failing that, if the invention is an invention of an employee (A4 PR):
- the courts of the Contracting State in which theemployee carries on his main activity, or
- if it can not be determined, the courts of the Contracting State in which is the establishment of the employer (A60 (1) EPC),
- failing that, the courts of the Contracting State in which the holder at his domicile or registered office (A2 PR),
- failing that, the courts of the Contracting State in which the person applying for the patent right at his domicile or head office (A3 PR),
- failing that, the courts of theGermany (A6 PR).
The court seised must verify whether it is actually competent (A7 PR).
The EPO has no discretion in this area (A9.2 PR).
I draw your attention to the fact that the competent courts born can be that a court of a Contracting State: no US jurisdiction, Chinese, etc. can not be competent.
Note, however, that if such a court makes a decision, it would be possible to have the decision recognized by a court of a Member State by exequatur. However, the stay of proceedings of the R14 EPC (and described below) will not be possible.
Section 1.2. Conditions for exercising your right at the EPO
In order to exercise his right with the European Office, three conditions must be fulfilled (R16 (1) EPC):
- the patent is not yet to be issued,
- the decision of the competent court must beres judicata"Since less 3 months,
- the decision must be recognized under protocol on recognition (Articles 9 and 10) in the countries designated by the patent application (basically, there is nothing to do, except in special cases).
However, if a request is no longer pending (eg rejection), it still seems possible to benefit from the possibility of re-filing a patent application (G3 / 92).
Chapter 2. Suspension of the grant procedure
Section 2.1. Principle
Where a national court of a Contracting State (J6 / 03) is seized of a request to recognize that the holder of an application was not entitled to file it, a stay of proceedings may be requested from the European Patent Office R14 (1) EPC.
Section 2.2. Suspension of office
If the holder ever disputes the suspension, the legal division may then make a decision that is subject to appeal (J28 / 94).
Section 2.3. Goal
The purpose of this suspension is to protect the rights of the real rights holder and to prevent the claimant from scuttling the claim by seeing that the claimant's property will escape him.
In particular, the application (or a designation of a Contracting State in the application) can not be withdrawn (R15 EPC).
Section 2.4. Effect of suspension
When the proceedings are suspended, all time limits are suspended (R14 (1) EPC).
During the recovery, deadlines (having been suspended) resume, but without these can be less than 2 months (R14 (4) EPC, last phrase).
2.4.2. Example of delay calculation
You should know that :
- the number of days remaining to run is calculated in days then month because the Guidelines give examples of this type (see for example Directives D-VII 4.3)
- le délai de reprise jusqu’à l’expiration se calcule également en days then month.
Cela ne s’invente pas vraiment (surtout que dans les directives précédentes, il était indiqué que le calcul se faisait en jours-mois puis mois-jours…).
Cette méthode de calcul pose néanmoins un soucis si l’expiration du délai arrive un 31 juillet et que le délai était suspendu le 25 juin : nous n’avons que 30 jours au mois de juin et donc comment faut-il compter ? 5 jours + 1 mois + 1 jour ? Bref … si vous avez la réponse, n’hésitez pas !
2) Example 1
Suppose that a stay of proceedings occurs during the 6 months of the R70 (1) EPC to submit the request for examination.
3) Example 2
Suppose that the Opposition Division notifies the proprietor that his patent is maintained in modified form R82 (2) EPC : the holder 3 months to provide a translation of the claims.
Section 2.5. Competent body
It is the legal division that verifies that the conditions of suspension are met (Directives A-IV 2.2, “Decision of the President of the European Patent Office dated 12 July 2007 concerning the jurisdiction of the Legal Division” , OG 2007, Special Edition No. 3, G.1).
Section 2.6. Suspension decision
The suspension decision is normally granted, but this is not automatic.
In order to decide whether or not to suspend, the EPO must check whether the action complies with the following three points (J15 / 13):
- the person who initiated the action is the person who requested the suspension;
- the action is brought against the patent applicant;
- the action is a claim in the sense of theA61 (1) EPC (The action is not an obvious abuse: the EPO will then analyze the title of the action, the nature of the action. not analysis).
Section 2.7. Form of the suspension
In itself, the legal division does not make a decision since the suspension is a fact as long as the conditions of the R14 (1) EPC are met. If the plaintiff, warned, challenges the suspension, then only the EPO makes a decision.
This decision is then subject to appeal and the third party is party to the appeal (J28 / 94).
Warning, because the Directives A-IV 2.2 consider that the suspension must be pronounced in a decision (intermediary subject to appeal with the final decision).
Section 2.8. Relevant dates
2.8.1. Date of suspension
The day the third party brings the proof (R14 (1) EPC) that he has brought proceedings against the plaintiff to have his right to the invention recognized, the proceedings are suspended.
The date of the suspension is entered in the REB (R143 (1) (s) EPC).
2.8.2. Existence of the procedure for the recognition of the right to a patent
Concerning the moment at which the procedure really exists, it is necessary to look at the national law governing this procedure (D7 / 00).
For example, depending on the country, it can be:
- the filing of the document instituting the proceedings with the registry;
- service on the applicant of this act;
2.8.3. Date on which the suspension can no longer be requested
Suspension may be requested as long as no patent is issued (R16 (1) (b) EPC).
It must be understood that this request for suspension must be made before publication of the mention of issue in the bulletin (D7 / 96).
Par ailleurs, si une demande n’est plus en instance (ex. rejet), il semble toujours possible de bénéficier de la possibilité de redéposer une demande de brevet (G3 / 92) même si la suspension n’a plus de sens.
Section 2.9. Limits of the suspension
2.9.1. Authorized by the third party
We can not see why, but the third party can consent to the continuation of the procedure (R14 (1) EPC). This consent is irrevocable.
This is relatively dangerous because the applicant could withdraw the application or withdraw certain designated countries (the R15 EPC no longer having effect).
Nevertheless, in case of withdrawal, the third party may a priori file a new application if he obtains the right to the patent later (G3 / 92).
2.9.2. Annual fee
If the issuing procedure is suspended, do not forget to pay annual fees in order to prevent the loss of demand (R14 (4) EPC).
Anyone can pay these annual taxes: thus, if the holder of the request does not pay them, it is always possible for the person thinking to be the true holder to pay them (AX 1 Guidelines).
2.9.3. Publication of the application
Moreover, and in order to prevent a malicious application from being hidden for several years by preventing its publication, the suspension of the proceedings can not take place after the publication of the application (R14 (1) EPC, last phrase).
2.9.4. Discretionary waiver
Finally, the suspension of the proceedings may be lifted by the Office in a discretionary manner (R14 (3) EPC), in particular if it considers that the proceedings before the national courts are purely delaying (Directives A-IV 2.3 , J4 / 17) or much too long (T24 / 13).
The date of resumption (in the event of suspension being lifted) may be modified upon request (T146 / 82).Warning
Even if the applicant can then withdraw his application or withdraw certain designated countries (the R15 EPC no longer having effect), this will not prevent the third party from filing a new application if he obtains the right to the patent later (G3 / 92).
Chapter 3. Suspension of the opposition proceedings
Most of what has been said above applies.
Nevertheless, the opponent or the intervener can not request this suspension: it must be a third party (R78 (1) EPC).
Chapter 4. Exercising one's right following a recognition
Since the three conditions mentioned above are fulfilled, the person who requested that his right to the patent be recognized mayA61 (1) EPC):
- either file a new patent application (A61 (1) (b) EPC);
- either take over the existing demand (A61 (1) (a) EPC);
- either request the rejection of the existing application (A61 (1) (c) EPC).
This choice is open for a period of 3 months from the definitive decision recognizing his right to the patent (R16 (1) (a) EPC).
Section 4.1. Filing a new application
The filing of a new application (A61 (1) (b) EPC) follows the rules for filing a standard application (Guidelines A-IV 2.7), although it can only be filed before the EPO: indeed, the R15 (3) CBE73 deleted in the EPC 2000.
Of course, it will be necessary to pay the filing and search fees under 1 month (R17 (2) EPC, ie as for a "normal" application) and to pay the designation fees within a 6 months from the mention of the publication of the search report (R17 (3) EPC, ie as for a "normal" request).
TheA121 EPC is applicable to these two periods.
The request for grant must include the number of the initial application (R41 (2) (f) EPC).
4.1.2. Language of the new request
As with divisional applications, the language of filing of the new application must be that of filing the original application or, if desired, the language of the proceedings of that initial application (R36 (2) EPC).
4.1.3. Designated states
4.1.4. Old request
In this case, the existing demand is deemed withdrawn (R17 (1) EPC) from the filing of the new application.
In the event that the existing application is no longer pending (ie abandoned, deemed withdrawn, etc.), it is always possible to file a new application (although this may seem shocking for the rights of third parties, G3 / 92). No contrary decision has come to contradict it (C-IX 2.2 Guidelines).
4.1.5. Benefit from the filing date of the old application
Moreover, theA61 (1) EPC together A76 (1) EPC specifies that the new request will benefit from the filing date of the existing application, but also that you will not be able to add material to the existing application (so the description should not add to extend the content of the application beyond that of the original application).
Section 4.2. Resumption of existing demand
In this hypothesis (A61 (1) (a) EPC), the person who requested that his right to the patent be recognized somehow replicates the history of the application to his account. He must also request it in writing from the EPO.
Therefore, the procedure is taken again with this person (and possibly with the other parts if it exists, these being warned R14 (2) EPC, ex. opponents).
The advantage of this option is above all financial: the taxes already paid by the former applicant are no longer due.
However, in order not to rush the new owner (discovering the application and the file):
- the office lets go at least a delay of 3 months between the "res judicata" of the court's decision and the resumption of the proceedings (R14 (2) EPC, last phrase) ;
- the deadlines (having been suspended) resume, but without these can be less than 2 months (R14 (4) EPC, last phrase).
Section 4.3. Rejection of the existing application
There is not much to say: the EPO will simply reject the existing application (A61 (1) (c) EPC) ...
Section 4.4. Special case in case of partial transfer of rights
If a final decision recognized the right to the patent to a third party for a part only this third party can only file a new application (R18 (1) EPC ie rejection and resumption of the application are not possible, Guidelines C-IX 2.3).
It is also possible that the final decision only recognizes the right to the patent for certain contracting states (R18 (2) EPC).
This can happen especially if a co-development contract provided for such a right.
In this situation, the third party can:
- either file a new application,
- either continue with the demand for these states (so this case there will be an exception to the principle of uniqueness of theA118 EPC : descriptions and drawings may be different C-IX 2.4 Guidelines and Directives H-III 4.3.1).