14) EPC

Question 1

Describe how to calculate the first renewal fee due on an EP application.

Answer 1

• Fees are payable for the 3rd and subsequent year
• Calculate from the FD (not the PD!), so FD+ 2Y
• Due on the last day of the month containing the anniversary of FD

Question 2

Complete A86(2) EPC:
The obligation to pay renewal fees shall [1…] with the payment of the renewal fee in respect of the year in which the [2…] is published in the [3…].

Answer 2

1. Terminate
2. Mention of the grant of the EP
3. EP Bulletin

Question 3

For A54(3), what is meant by the Application must be a “valid” application at the time of its publication?

Answer 3

If the app was withdrawn/ lost before the date of publication, but published because the tech preps had been completed, then publication has NO effect under A54(3) - and cannot be cited for novelty

Question 4

When is A55 ‘non-prejudicial disclosure’ applicable?

Answer 4

1. Within 6M from FD
2. As a result of evident abuse (intention to harm or risk of causing harm)

Question 5

Who can intervene against a Patent?
What are the conditions for intervention?

Answer 5

Any 3P who:
1) is being sued by the Patentee (Assumed Infringer)
2) has received a Request from Patent to stop an infringing act and has request Declaration of non-infringement

I) Opposition/Appeal must be pending
II) Opposition period must have expired
NB. During the Opposition Proceedings, the 3P can join the Opposition
III) Intervener must pay an Opposition fee

Question 6

Who can oppose an EP?

Answer 6

Anyone (except the patentee!)
NB. If a patentee wishes to amend or surrender, then can do using Central Revocation/ Limitation procedure

Question 7

What is the DL for filing an Intervention at EPO?

Answer 7

3M from the date on which:
1) Infringement proceedings were started against the 3P
2) A request for non-infringement was submitted by the 3P

Question 8

Can an intervener raise new grounds of Opposition that were no raised by the Opponent?

Answer 8

Yes, but only for pending Oppositions (not during pending Appeals)

Question 9

In what situation do EPO Opposition proceedings get suspended?

Answer 9

If Entitlement proceedings have started in a National Court

Question 10

When can the patentee or a 3P not request EPO Central Revocation/ Limitation of her EP patent?

Answer 10

If Opposition proceedings are pending

Question 11

What happens if an opposition is filed during the procedure for central Limitation?

Answer 11

The opposition takes precedence and the Central Limitation procedure is terminated