Publication and provisional protection

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Chapter 1. Publication of the application

Section 1.1. Publication date

1.1.1. Principle

When a patent application is filed, it is not immediately published.

Nevertheless, on the expiry of a 18 months (from the priority date or in the absence of the filing date of the application), the application will be automatically published (A93 (1) (a) EPC).

This publication normally occurs first Wednesday after the expiry of that period ("Publication dates 1997/1998” , OJ 1997, 542point 3). Nevertheless, a delay in the publication is quite possible.

This date is notified to the applicant when the publication number is communicated to the applicant (R69 (1) EPC) and is registered in the REB (R143 (1) (l) EPC).

1.1.2. Information of the applicant

At the end of the technical preparations undertaken for publication, the applicant is informed and communicated (Directives A-VI 1.1):

  • the date of publication,
  • 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 with a view to preventing publication” , OG 2006, 406point 3).

1.1.3. Early publication

1) Due to the plaintiff

Of course, it is still possible for the applicant to request that his application be published in advance (A93 (1) (b) EPC).

The goal is most often:

  • to bring the application as quickly as possible into the state of the art A54 (2) EPC and for most countries of the world;
  • to benefit from rapid provisional protection (A67 CBE).

This advance publication is only possible if:

2) Due to the speedy grant of the European patent

In addition, if the EPO decides to issue a patent before the expiry of the 18 months (which hardly ever happens), there will also be an advance publication (A93 (2) EPC).

1.1.4. Absence publication

1) Case of non-publication

There is no publication if the application has been rejected definitely or has been withdrawn Where is deemed withdrawn before the end of the technical preparations (R67 (2) EPC).

If ever the demand is deemed withdrawn, but that the plaintiff requested a decision according to the R112 (2) EPCthe application will still be published (Directives A-VI 1.2 andCommuniqué of 28 August 1990 on the publication of European patent applications not yet definitively deemed to be withdrawn” , OJ 1990, 455).

2) End of technical preparations

Normally, it is necessary that the previous event (rejection, withdrawal, etc.) occurs before the end of technical preparations (the R67 (1) EPC provides that the chair shall determine when these preparations are deemed to have been completed: "Decision of the President of the European Patent Office dated 12 July 2007 concerning the completion of the technical preparations undertaken for the publication of the European patent application” , OG 2007, Special Edition No. 3, D.1) that is, before the end of the day preceding a period of 5 weeks before the expiry of the 18 months of the oldest priority.

For the calculation of 5 weeksyou have to look at the R131 (5) EPC (ie day with the same name).

The R134 EPC does not apply at the end of the technical preparations, as this is not a deadline.

In any case, the end of the technical preparations is notified to the applicant, 4 weeks approximately before publication, together with the publication number and the date of the planned publication (Directives A-VI 1.1 andNotice from the European Patent Office dated 25 April 2006 concerning the withdrawal of the application to prevent publication” , OG 2006, 406).

It is often possible in practice to prevent the publication of the patent application if the application is explicitly withdrawn 2 weeks before the date of publication (but nothing is guaranteed, "Notice from the European Patent Office dated 25 April 2006 concerning the withdrawal of the application to prevent publication” , OG 2006, 406): the EPO will do its best to avoid publication, but withoutDirectives A-VI 1.2).

3) Conditional withdrawal

It is possible to request a withdrawal "conditional"To avoid any unpleasant surprises ("Notice from the European Patent Office dated 25 April 2006 concerning the withdrawal of the application to prevent publication” , OG 2006, 406): withdrawal conditioned on the non-publication of the application.

Thus, if ever the EPO publishes the application anyway, it is still possible to continue the issuing procedure with this application.

It is not possible to make other reservations (J11 / 80).

4) Withdrawal statement

The withdrawal must be explicit and must be the subject of a mail with this sole purpose (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” , OG 2006, 406).

This declaration can be sent by fax.

5) Publication despite a withdrawal

It may happen (eg error by the EPO, withdrawal after the end of the technical preparations) that, despite the actual withdrawal of the application, the application is still published by the EPO.

In the latter situation:

  • this publication can not be considered as a publication according to theA54 (3) EPC (J5 / 81 and G-IV Guidelines 5.1.1): it will only be a simple publication A54 (2) EPC ;
  • the right to the patent, provided for inA60 (2) EPC, may still be granted to a second person who filed after (but before publication of course);
  • provisional protection of theA67 (4) EPC will not apply;
  • the application can not be regarded as an earlier national right according to theA139 (1) EPC (J5 / 81);
  • public inspection is not possible (J5 / 81).

Section 1.2. Technical preparations for publication

Technical preparations (R67 (1) EPC) are deemed to have been completed the day before a period of 5 weeks before the expiry of the 18 months mentioned above ("Decision of the President of the European Patent Office dated 12 July 2007 concerning the completion of the technical preparations undertaken for the publication of the European patent application” , OG 2007, Special Edition No. 3, D.1).

Section 1.3. Content of the publication

1.3.1. Principle: type A1 publication

The publication "A1" contains (R68 (1) EPC):

  • if filed in an official language:
    • the description (of course),
    • the revendications,
    • 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 (ERR) if it is available before the end of the technical preparations,
  • the names of the inventors, if they have not given up under the R20 (1) EPC ;

Of course, if missing elements were provided after the deposit, they will be found in the publication (Directives A-VI 1.3).

If corrections according to the R139 EPC have been made on request before the end of the technical preparations, they will also be present in the publication (Directives A-VI 1.3). If a correction is pending, it is mentioned on the title page of the publication page (Directives A-VI 1.3).

If the RRE can not be published by this date, it will be published separately (publication type "A3", R68 (1) EPC, last phrase).

Furthermore (R68 (4) EPC):

  • if no claim has been filed at the time of filing, this is stated in the publication,
  • if the claims have been amended since the filing date, both sets of claims are published.

1.3.2. Type of publication

For requests, there are 4 types of publication (BX 7 Guidelines):

  • A1: demand and RRE,
  • A2: request only,
  • A3: RRE alone,
  • A4: supplementary research report (A153 (7) EPC).

For corrections ("Information on the publication of European patent documents - New system for publishing corrections to documents A and B” , OG 2001, 117):

  • A8: corrected title of a document A,
  • A9: complete reprint of a document A,
  • B8: corrected title of a B document,
  • B9: complete reprint of a B document

Chapter 2. Temporary protection

Section 2.1. Start of protection

The publication request (and not mention of publication in the bulletin) provides temporary protection in designated countries (A67 (1) EPC).

It is quite possible to request an advance publication (A93 (1) (b) EPC).

For PCT applications, the publication is considered to be (A153 (3) EPC and A153 (4) EPC):

  • of the PCT application, if the language of publication is an official language of the EPO (ie French, English, German);
  • publication by the EPO of a translation of the application, failing that.

Section 2.2. 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 (for final grant), the scope of provisional protection will be retroactively modified (A69 (2) EPC). Nevertheless, if the scope has been extended, the scope of provisional protection will remain the scope of the claims on the day of publication.

Of course :

  • if prior to grant, the patent application is withdrawn or rejected, the provisional protection will be retroactively destroyed (A67 (4) EPC).
  • if the patent application or patent is revoked, limited or declared void, the provisional protection will be retroactively destroyed (A68 CBE).

Section 2.3. Countries granting this protection

Countries granting such protection are those designated contracting countries in the application (A67 (1) EPC).

As normally all countries are named in the request for grant, this somewhat simplifies the issue (A79 (1) EPC).

If a designation is withdrawn from the application, the provisional protection will be retroactively destroyed for that state (A67 (4) EPC).

For extension states, one must look specifically at the corresponding extension agreements.

Section 2.4. Translation requirements

If the language of the proceedings is not an official language of the state concerned, that state may prescribe that a translation of the claims (A67 (3) EPC) is :

  • made available to the public; and or
  • surrender to the alleged infringer.

Be careful, not all countries offer both options. Some countries (Albania) impose both the surrender to the infringer and the making available to the public.

This language may be one of the official languages of the state at the choice of the applicant, but the state may not allow all its official languages (eg Luxembourg requests a translation in German or French, but not in Luxembourgish).

Section 2.5. Type of protection

Subject to any translation required by national law (A67 (3) EPC), this protection provides (A67 (2) EPC):

  • the protection conferred by a national patent application (eg San Marino),
  • but at least, a reasonable compensation (This is also provided by the majority of national laws, except San Marino).

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