Designation of Contracting States and extensions

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Chapter 1. Designations

Section 1.1. Designation of States

Since 13 December 2007, all Contracting States are deemed to be designated in the request for grant (A79 (1) EPC).

Previously, it was necessary to designate them explicitly (A79 (1) CBE73).

Section 1.2. States that may be designated

If the date of filing of an application is prior to the accession of that State, that request may not designate that State (A166 CBE).

For a PCT application, it is necessary that the international application designates the States to be designated in the European application and that, on the international filing date, that State has acceded to the EPC (J30 / 90).

Normally, it is not possible to ask for a postponement of the filing date on the grounds of obtaining a patent for the newly-registered State of the EPC (J14 / 90).

Nevertheless, there are transitional provisions which allowed, if the application was filed in the month prior to the accession and if an express request was made at the time of the deposit, to attribute as date of deposit the date of accession:

  • for SK, BG, CZ and EE: accession as of 1 July 2002;
  • for SI: accession on 1 December 2002;
  • for HU: accession on 1 January 2003;
  • for RO: accession on 1 March 2003;
  • for PL: accession on 1 March 2004;
  • for IS: accession on 1 November 2004;
  • for LT: accession on 1 December 2004;
  • for LV: accession on 1 July 2005;
  • for MT: accession on 1 March 2007;
  • for NO and HR: accession as of 1 January 2008;
  • for MK: accession on 1 January 2009;
  • for SM: accession on 1 July 2009;
  • for AL: accession on 1 May 2010;
  • for RS: membership on 1 October 2010.

Section 1.3. Designation fees

1.3.1. As of April 1, 2009

Only one designation fee is due (A2 (1) .3 RRT): 585 €.

1.3.2. Before April 1st, 2009

A tax is due for each designated state (A2 (2) .3 RRT): 100 €.

Nevertheless, if 7 taxes are paid, taxes for all states are deemed to be paid.

Switzerland and Liechtenstein count as one State for the calculation of designation fees (A149 (1) EPC and A2 (2) .3bis RRT).

1.3.3. time

The deadline for paying the designation fee is 6 months from the mention of the publication of the European search report (A79 (2) EPC together R39 (1) EPC).

However, the designation fee is due on the date on which the mention of the publication of the European search report is published (AX 5.2.2 Guidelines): this means that if you pay this tax at the deposit, you will have to pay the difference if there is a change in rate.

This period shall be notified to the applicant in the notification provided for in R69 (1) EPC (the designation fee is also recalled, Directives A-VI 2.1).

1.3.4. Sanction of non-payment

If the designation fee is not paid on time, the application is deemed withdrawn (A79 (2) EPC together R39 (2) EPC).

TheA121 EPC is applicable.

The loss of rights occurs upon expiry of the 6 months (G4 / 98, Guidelines A-III 11.3.4) and therefore neither retroactively nor at the end of the period to require further processing.

1.3.5. Skill

It is the Examining Division which is competent (Guidelines C-II 4) even though this task was entrusted to the formalities officers, in accordance with the R11 (3) EPC ( ' Decision of the President of the European Patent Office dated 12 December 2013 to assign to agents who are not examiners certain tasks of the Examining or Opposition Divisions », OJ 2014, A6point 19).

1.3.6. divisional

The designation fee must be paid within 6 months from the mention of the publication of the search report for this divisional application (R36 (4) EPC).

Otherwise, the request is deemed withdrawn (R39 (2) EPC).

TheA121 EPC is applicable.

Countries not designated in the previous application can not be reintroduced (A76 (2) EPC, G4 / 98 and Directives A-IV 1.3.4).

Section 1.4. Withdrawal of a designation

It is possible to withdraw a designation at any time until delivery (A79 (3) EPC, Guidelines A-III 11.2.4), even from filing (eg to avoid problems with previous national rights, A139 (3) EPC).

1.4.1. Withdrawal and refund of tax

Otherwise :

  • for filed applications before on April 1, 2009, if a designation is withdrawn while the corresponding designation fee has been paid, the designation fee is not refunded (A79 (3) CBE73);
  • for filed applications after on April 1, 2009, if all designations are withdrawn while the designation fee has been paid, the designation fee is not refunded (R39 (3) EPC).

1.4.2. Withdrawal of all designations

The withdrawal of all designated States is equivalent to the withdrawal of the application and the applicant is informed (R39 (2) EPC or A79 (3) CBE73).

1.4.3. Rename

During a withdrawal, it 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 April 1, 2009 or Guidelines A-III 11.2.4 if not).

1.4.4. Suspension of the proceedings

It is not possible to withdraw a designation from the day a third party proves that it has initiated a procedure to have it recognize the right to A61 CBE (R15 EPC) and that third party does not consent to the continuation of the proceedings (R14 (1) EPC).

1.4.5. Fixed a withdrawal

It is possible to correct a withdrawal by mistake thanks to the R139 EPC, but it must respect certain conditions (J10 / 87):

  • at the time the cancellation of the withdrawal, this withdrawal was not made known to the public officially;
  • the withdrawal is due to an excusable oversight;
  • the cancellation does not result in a significant delay in the proceedings;
  • the EPO has ensured that third parties who have been aware of the withdrawal by consulting the file are protected (eg no request for access to the file has been made).

Chapter 2. Extensions

Section 2.1. Legal basis and application of the EPC

Extension agreements are concluded by the President of the EPO with the authorization of the Board of Directors pursuant to theA33 (4) EPC.

Apart from that, the EPC never mentions "extension states".

It is thus the decrees of application of these agreements in national law which applies. So,

  • no remedy provided for by the EPC is applicable (J14 / 00);
  • the decisions of the Examining or Filing Division concerning the designation of an extension State are not subject to appeal (J14 / 00, D9 / 04 J2 / 05);
  • the correction of the R139 EPC can not be used here (indicated in the extension agreements).

Section 2.2. Extension States

The extension countries are:

  • Slovenia (SI):
    • from March 1, 1994 to applications filed before December 1, 2002;
    • today it is a Contracting State;
    • OJ 1994, 75.
  • Lithuania (LT):
    • since July 5, 1994 and to applications filed before December 1, 2004;
    • today it is a Contracting State;
    • OJ 1994, 527.
  • Latvia (LV):
    • from May 1, 1995 to applications filed before July 1, 2005;
    • today it is a Contracting State;
    • OJ 1995, 345.
  • Albania (AL):
    • from February 1, 1996 to applications filed before May 1, 2010;
    • today it is a Contracting State;
    • OJ 1996, 82.
  • Romania (RO):
    • from October 15, 1996 to applications filed before March 1, 2003;
    • today it is a Contracting State;
    • OJ 1996, 601.
  • Macedonia (MK):
    • from November 1, 1997 to applications filed before January 1, 2009;
    • today it is a Contracting State;
    • OJ 1997, 538.
  • Republic of Croatia (HR):
    • from April 1, 2004 to applications filed before January 1, 2008;
    • today it is a Contracting State;
    • OJ 2004, 117.
  • Serbia (RS):
    • from November 1, 2004 to applications filed before October 1, 2010;
    • today it is a Contracting State;
    • OJ 2004, 563.
  • Bosnia and Herzegovina (BA):
    • since December 1, 2004;
    • OJ 2004, 619.
  • Montenegro (ME):
    • since March 1, 2010;
    • OJ 2010, 10.

Section 2.3. Euro-PCT application

In order to be able to designate an extension state in a Euro-PCT application, that State must be designated in the PCT application (Directives A-III 12.1).

At the deposit, all the extension states are deemed to be designated (Directives A-III 12.1).

Section 2.4. Designation fee

A designation fee, by state of extension, must be paid to the EPO.

2.4.1. Amount

This tax is identical for all countries (102 €) and is provided for in each extension agreement (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 in Montenegro », OG 2010, 10 point 4.2).

2.4.2. time

The deadlines are provided for in each extension agreement, but are all identical (Directives A-III 12.2):

  • for a standard European application:
    • 6 months from the mention of the publication of the European search report;
  • for a Euro-PCT application, the max of:
    • 31 months from the filing date (or, if applicable, the earliest priority date);
    • 6 months from the mention of the publication of the international search report.

2.4.3. Default of payment

If ever, an extension fee is not paid, the following situations may occur (Directives A-III 12.2):

  • if all the designation fees have been correctly paid:
    • no notification will be sent to the applicant;
    • the applicant has additional time 2 months to pay the forgotten extension fee and a surcharge (ie from the expiry of the first deadline) (modeled in the extension agreements on the old R85bis (2) CBE73);
    • the surcharge is 50% the extension fee (provided by the extension agreements).
  • if a designation fee has not been paid:
    • a notification will be sent under the R112 (1) EPC ;
    • the applicant may pay the extension fee and a surcharge (' Notice from the European Patent Office dated 2 November 2009 concerning the reintroduction of additional time-limits for the payment of extension fees », OCT 2009, 603):
      • in a delay of 2 months from the expiry of the first period ("additional time reintroduced" modeled on the old R85bis (2) CBE73);
      • in a delay of 2 months following the notice of loss of rights (whether or not a proceeding is required, Directives A-III 12.2);
    • the surcharge is 50% ( ' Notice from the European Patent Office dated 2 November 2009 concerning the reintroduction of additional time-limits for the payment of extension fees », OCT 2009, 603 if no further proceedings are required, A2 (1) .12 RRT if not).

Section 2.5. Removing an extension

An extension can be withdrawn at any time, but the extension fee is not refunded (Directives A-III 12.3).

Section 2.6. Divisional case

It is not possible to reintroduce extension countries in a divisional application if it is not possible to extend, on the filing date of the divisional application, the initial application in those extension countries (Directives A-III 12.1, ie if the deadline for paying the extension fees has expired at the filing of the divisional).

Chapter 3. Special case of Morocco

Section 3.1. Principle

Applications filed on or after March 1, 2015 may also designate Morocco even though it is not formally part of the European Patent Convention Validation of European patents in Morocco (MA) from 1 March 2015 », OJ 2015, A20).

Section 3.2. Conditions: tax and time

To validly submit a validation request, you must pay a designation fee of 240€( ' Decision of the President of the European Patent Office dated 5 February 2015 fixing the amount of the validation fee for European patent applications and European patents in Morocco », OJ 2015, A18):

  • for a normal European application:
    • in the 6 months from the mention of the publication of the European search report to the bulletin (' Validation of European patents in Morocco (MA) from 1 March 2015 », OJ 2015, A20);
  • for a Euro-PCT application:
    • in the 6 months from the international publication of the international search report (" Validation of European patents in Morocco (MA) from 1 March 2015 », OJ 2015, A20 together A153 (6) EPC together R70 (1) EPC);
    • if the previous delay expires before entering phase, upon entering phase.

The validation fee may still be validly paid within an additional period of 2 months, subject to the payment within this period of a surcharge equal to 50% of the amount of the tax.

Section 3.3. Effects

European patent applications and validated European patents provide, in Morocco, essentially the same protection as European patents in the Member States (" Validation of European patents in Morocco (MA) from 1 March 2015 », OJ 2015, A20).

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