Core Knowlage Flashcards
What is in Article 14EPC
Languages of the EPO
14.1 - official languages
14.2 - filing languages - R6 for translations and discounts
14.3 - language of the proceedings - establishment and Derogations - R3 - written proceedings R4 - Oral proceedings
14.4 - Permitted unofficial languages and effect of non filing - deadlines R6
14(5) - Language of publication of application LOP
14(6) - Language of publication of the patent LOP +claim s3OL
14(7) - language of the bulletin and the OJ 3OL
14(8) - languages of entries in the register 3OL
What article languages before the EPO, applications and other documents
Art 14
What article for filing language of applications
ART 14(2) - R6 for translations
What article for the official language of an app
Art 14(3) - Derogations R3 - written proceedings - other official language may be used but amendments to the application must be in LOP R4 - Oral proceedings
what article defines the language of publication of the specification
Art 14(6)
What article defines permitted unofficial languages for communication
Art 14(4) - Rule 6 gives discount and translation requirements
What is art 54(2)
The definition of the prior art - not a prior right! which also forms part of the state of the art. - everything made publicly available in any form.
What article defines a prior right?
Art 54(3) - excluded from inventive step art 56
What is article 54(3)
This defines a prior right - a patent application filed AT THE EPO that publishes after the filing date of the current invention - shall form part of the state of the art
What article defines the state of the art?
art 54(2) - everything publicly available before the filing date.
Art 65
Translation requirements on grant - also in national law tables.
right of the national office to request a translation of a patent as granted, amended or limited - note london agreement
London agreement
Countries sharing an official language with the EPO do not require translations of the application for validation. (likely still will require for provisional protection Art 67)
other countries not sharing a language in common some require translation only into english - most scandi countires.
what article gives you translation requirements for validation?
Art 65
What article gives you the term of a patent
art 63
what is art 76 and what rule applies?
Rule 36 - European divisional applications
what section and rule gives the information for filing a European divisional application?
Art 76 and Rule 36
what is the test for a divisional
The applicant can file a divisioal application realting ato any PENDING R36(1) application
what can be included in a divisional?
ARt 76(1) only the subject matter in the parent application. ARt 76(2) the divisional will only designate the countries designated AT THE TIME OF FILING OF THE div app
What article covers Priority
Art 87
What is the test for priority?
ARt 87 (1) - Any person who FILED an app in a paris conv or WTO country during a period of 12m from filing of the FIRST application - app is considered filed if assigned a filing date Art 87(3) - first app Art 87(4)
What does Art 87(4) deal with?
First filings for providing priority
What does Art 99 deal with? and what applicable rules?
opposition period - art 99(1) within 9m of grant AND PERSON may give notice of opposition to the granted patent
the opposition willl be deemed filed once the fee has been paid
art 99(3) - opponenets and proprietors shall be party to the opposition
Rule 75 - opposition to a lapsed or surrendered patent
Rule 76 - content of an opposition
What ARticle deals with opposition and what requirements must be fulfilled for an opposition to have been filed?
Art 99(1)The oppositoin must be filed and the fee paid. The opposition must be signed. however, if not signed EPO will write requesing signature - 2m deadline.
What article deals with the grounds for opposition?
Article 100(1) - only patentability art 52-57, sufficiency, added matter
What does art 100 cover?
Grounds for opposition
- patentabilty - 52-57
- sufficiency
- added matter
what are the artles related to patentabilty?
Art 52 - patentable inventions Art 53 - Exceptions to patentability Art 54 - Novelty Art 55 - non-prejudicial disclosures Art 56 - inventive step Art 57 - Industrial applicability Art 61 - application filed by non entitled persons
Art 52?
patentable inventions
ARt 53?
Exceptions to patentability
Art 54?
Novelty
Art 55
non-prejudicial disclosures
ARt 56
inventive step
Art 57
Industrial applicability
art 61
application filed by non entitled persons
What does Art 108
filing of an appeal - time limits and form.
what article deals with filing of an appeal?
Art 108 - time limits and form.
Time limit for filing an appeal is 4m from of notification of the decision
fee must be paid for appeal to be valid.
Art 114
art 114(1) - In proceedings before it - inc examination, appeals, opposition. The EPO shall examine the facts at it's own motion, ARt114(2) - the epo may disregard facts that are not submitted in due time by parties concerned
What article deals with the EPO’s ability to examine facts at its own motion?
Art 114(1)
What article states that the EPO may disregard facts or evidence that are not supplied by parties in due time by the parties concerned
Art 114(2)
What article deals with Further Processing
Art 121
What are the requirements for further processing?
Art 121: no written request required. Merely pay fee and complete omitted act within 2m from the missed deadline.
Art 122
Re establishment - shall be allowed if applied for within 2m of removal of the cause of non compliance and within one year of the date of expiry of the unobserved time limit. R136(1)
Which section deals with re-establisment
Art 122 and the details in R136
What Article deals with added/allowability of matter?
ARt 123(2)
What does art 123(2) state
A european patent application can not be amended in a manner that extends beyond the application as filed.
What article covers the general principles of representation?
Art 133(1) no person shall be compelled to be represented by a professional Art 133(2)persons not having their residence or principle place of business in a contracting state must be represented by a professional
what does article 133 cover?
Principles of representation.
no person shall be compelled to be represented by a professional 133(1)
unless they are not a resident or have a principle place of business in a contracting state 133(2)
Art 141
Renewal fees - post grant
144(2) - fees can be validly paid at the EPO if they fall due within two months of grant.
Art 86
renewal fees payable in advance for the 3rd year from filing
Timings Rule 51
51(1) fall due at the end of the month of the anniversary of filing
payable 6m in advance for 3rd year and 3m for all following
51(2) payable within six months of due with extra fee
51(3) all outstanding renewals from the parent must be paid on filing of a divisional + any due in 4m may also be paid. No fees shall apply
51(4) renewals pending before re-establishment
51(5) renewals pending before appeals
51(6) no renewals for 1st year of new application to entitled applicant.
article for renewals
Art 86 R51 - and Art 141 post grant
article dealing with post grant renewals
Art 141
Art 153(7)
ARt 153 - EPO as designtated or elected office for PCT proceedings
Art153(7) -
article 67
provisional protection on publication
what article deals with provisional protection on publication
Art 67
Requirement for translations into local countries
PCT ART 153(5) - protection from PCT applications
What article deals with EPO as PCT designated office?
ARt 153
R3
Language in written proceedings
3(1) may occur in any official language - and 14(4) translations
3(2) amendments must be in language of proceedings
3(3) docs and evidence can be filed in any language - a translation may be required.
Language and translation requirements for written proceedings are given where?
Language in written proceedings
3(1) may occur in any official language - and 14(4) translations
3(2) amendments must be in language of proceedings
3(3) docs and evidence can be filed in any language - a translation may be required.
R4
language in oral proceedings
4(1) - any EPO official language may be used with one month notice - any contracting state language may be used if party makes provision for translation
4(2) - EPO may use any official language - but should have a good reason and provide for interpretation E-V,5
4(3) evidence can be given in any language - intermpretation should be provided or may be disregarded
Language and translation requirements for oral proceedings are given where?
language in oral proceedings
4(1) - any EPO official language may be used with one month notice - any contracting state language may be used if party makes provision for translation
4(2) - EPO may use any official language - but should have a good reason and provide for interpretation E-V,5
R6
Translations and reductions in fees
6(1) Art 14(2) (App filed in a non EPO language) trans shall be filed within two months of filing
6(2) Art 14(4) (further docs submitted within a time limit in non EPO language, must be contracting state lang) trans shall be filed within one month of filing
6(2) filling/exam fee will be reduced 30% RFees 14(1) if app filed/exam requested in 14(4) language
general requirements for translations for fillings and EPO communications are given where?
Art 14 - R6
Translations and reductions in fees
6(1) Art 14(2) (App filed in a non EPO language) trans shall be filed within two months of filing
6(2) Art 14(4) (further docs submitted within a time limit in non EPO language, must be contracting state lang) trans shall be filed within one month of filing
6(2) filling/exam fee will be reduced 30% RFees 14(1) if app filed/exam requested in 14(4) language
R40
Filing date
R40(1) date shall be given when:
-indication patent is sought
-identification of the applicant or ability to contact the app.
- a description or reference to an earlier app
R40(2)
-ref to a previous app shall contain filing date an, app no and filing office.
R40(3)
- if filed by ref cert copy required in 2m and if not EPO language trans within two months required.
requirements for a filing date are given where?
R40(1)
what is required if filing by ref to an earlier app
R40(1) this is possible R40(2) give filing date app number filing country/office R40(3) Cert copy in 2m if non EPO language trans 2m - as R53(2)
R45
Excess claims fees
R45(1) 26th+ claims and Due within 1m of filing first claims - if not paid within 1m of reminder
R45(2) subsequent claims will be deemed abandoned
excess claims fees are dealt with where?
R45(1) 26th+ claims and Due within 1m of filing first claims - if not paid within 1m of reminder
R45(2) subsequent claims will be deemed abandoned
if excess claims introduced later - cost is payable on 71(4) response
R51
Renewal fee
51(1) Due on the last day of the month containing the renewal date - paid for the coming year from the 3rd year (second year from date of filing.
first can be paid 6m in advance subsequent 3m in advance
Where are renewal fees dealt with?
Art 86 - R51
What articles/rules deals with Priority
What rule deals with Deal with declaration of priority?
Art 87 - PRiority Right - PC Art 4a(1)
ARt 88 - Declaration of priority
Art 89 - Effect of priority
Rule 52(1) - requirements number, state, date Rule 52(2) - Declaration of priority shall be made within sixteen months from earliest priority - late filed applications clamiing priority upto 14m are dealt with by reestablisment ARt 122 R136
What does Art 87 Deal with
Priority right
What does ARt 88 Deal with
Priority Declaration
What dooes art 89 deal with
Effect of priority
What does Rule 52 Deal with?
Rule 52(1) - requirements number, state, date Rule 52(2) - Declaration of priority shall be made within sixteen months from earliest priority - late filed applications clamiing priority upto 14m are dealt with by reestablisment ARt 122 R136
Where is Request for Examination dealt with?
Rule 70
R70(1) Deadline for request 6m from publication of the European search report in the Bulletin - not deemed received until fee paid
R70(2) invitation to proceed if Exam fee paid before search published.
What does R70 deal with?
Request for examination
R70(1) Deadline for request 6m from publication of the European search report in the Bulletin - not deemed received until fee paid
R70(2) invitation to proceed if Exam fee paid before search published
Where are oppositions dealt with?
Art 99 - ground for
R76(2) opposition shall contain
particulars of the opponent
patent number, proprietor and title of the invention
statement to what extent the application is opposed and the grounds
What does art 99 deal with?
grounds for opposition
Waht does R76 give
R76(2) opposition shall contain
particulars of the opponent
patent number, proprietor and title of the invention
statement to what extent the application is opposed and the grounds
What Rule deals with continuation of opposition proceedings by the EPO’s own motion?
Art114
Rule 84
what does R84 deal with?
continueation of opposition proceedings by the EPO at their own motion.
What does Rule 114 deal with?
Third Party Observations
Where are TPO dealt with?
Art 115 filed by any person - up until a final decision is pronounced/issued
Rule 114 - TPO
Where are the preparations for Oral proceedings dealt with?
Rule 116 - Preparation for oral proceedings - deadline for written submissions - new facts/evidence need not be considered if filed after this date.
(R115 - summons to oral proceedings)
What does R116 deal with?
Art 116 oral proceedings
Rule 116 - Preparation for oral proceedings - deadline for written submissions - new facts/evidence need not be considered if filed after this date.
What does R126 deal with?
Notifiaction by postal services specifically R126(2) is the 10 day rule
Where is the 10 day rule noted?
R126(2)
Where are calculation of time periods dealt with?
R131
(2) - computation starts on the day following an event
(3) - if calculated in months and the month does not contain that day then it will be the last day of the month.
What does R131 deal with and in particular R131(3)
Calculation of time periods
If a month does not contain the day then the time period will end on the last day.
What section deals with days an EPO office is closed?
R134(1) - deadline moves to the next day if ONE of the EPO offices is closed.
R134 (2-4) - General dislocations (postal disruptions) - force Majeur
What does R134 (1) deal with?
Deaadline to thenext day if ONE EPO office is closed
What does R134(2) deal with?
General dislocations
Where are general dislocations dealt with?
R134(2)
Where are amendments to an application dealt with?
Rule 137(1) - no amendments before receipt of the search report R137(5) - claims can not be amended to include unsearched subject matter
Where des it say that claism can not be amended to include unsearched subject matter?
Rule 137(5)
Where are corrections dealt with?
R139 - corrections to any docs may be made on request - for description, dwgs, claims must be immediately obvious nothing else was intended
Missing parts R56
What does R139 deal with?
Corrections
R139 - corrections to any docs may be made on request - for description, dwgs, claims must be immediately obvious nothing else was intended
Where is the common representative dealt with?
R151 - if there is more than one applicant and no common representative is named the first named will be considered a representative - unless one party is obliged to appoint a professional representative - unless the first party has appointed a professional representetive.
Waht does R151 deal with?
R151 - if there is more than one applicant and no common representative is named the first named will be considered a representative - unless one party is obliged to appoint a professional representative - unless the first party has appointed a professional representative.
What section deals with the EPO as a receiving office?
R157(1) EPO shall act as a receiving office.
R157(2) language requirement for EPO as RO for PCT
What does R157 deal with?
R157(1) EPO shall act as a receiving office.
R157(2) language requirement for EPO as RO for PCT
What does Art 153 deal with?
EPO as PCT RO
What deals with PCT exit into the EP Regional phase?
R159(1) PCT EXIT
-Translation where appilcable
- original/amended PCT docs as filed
Filing fee
designation fee if the R39(1) period has expired - later than 6m from publication of the int serach report
pay search fee where EESSR is required art153(7)
request for examination if R70(1) period has expired
pay renewal fees for 3rd year if already due
fi applicable supply certificate of exhibition required by Art 55(2)
What does R159 deal with?
R159(1) PCT EXIT
-Translation where appilcable
- original/amended PCT docs as filed
Filing fee
designation fee if the R39(1) period has expired - later than 6m from publication of the int serach report
pay search fee where EESSR is required art153(7)
request for examination if R70(1) period has expired
pay renewal fees for 3rd year if already due
fi applicable supply certificate of exhibition required by Art 55(2)
What article deals with opportunity for response to the ISR after EP entry?
EESSR when EPO is not the ISA
EESR when EPO is the ISA but response filed
R161(1) - opportunity to respond to the ISR after EP nat phase entry - 6m deadline no 10 day rule.
What article deals with Unity?
Art 82
What does Art 82 deal with?
Unity
What section deals with non Unity on PCT exit
Rule 164
Supplementary searches required/available after PCT exit
What does R164 Deal with?
Non unity on PCT exit/National phase entry
Article 8(1) PCT
Priority is possible - goverened by the paris convention
Where is prority dealt with in the PCT?
ARt 8(1)PCT
Where is the PCT filing date dealt with/
ARt 11(1) PCT
Where are the requirements for priorty declaration in the PCT?
R4(10)(a) PC or WTO signatory
(i) the date on which the earlier application was filed;
(ii) the number of the earlier application;
(iii) where the earlier application is a national application, the country party to the Paris
What does R4(10)(a)PCT
Declaration of priority
Where is the competent office defined in the PCT
Rule 19
19(1)
(a) Subject to the provisions of paragraph (b), the international application shall be filed, at the option of the applicant,
(i) with the national Office of or acting for the Contracting State of which the applicant is a resident,
(ii) with the national Office of or acting for the Contracting State of which the applicant is a national, or
(iii) irrespective of the Contracting State of which the applicant is a resident or national, with the International Bureau.
19(2) - multiple applicants - only one need be eligable
19.4 - transmittal to the IB by the RO
What does R19 PCT deal with
Transmittal to the RO
Where is transmittal of a PCT application dealt with in the PCT?
R19
R125-127
Notifications
What periods are started by publication of the European search report in the bulletin?
6m to request and pay exam fee inc pages fee
6m to pay designation fee R39(1)
response to the opinion R70a(1) issued with the European search report within 6m R70(1) period
Where is good faith felt with?
Art 125 and G5/88
What does art 125 deal with?
General provisions and good faith G5/88
Where is correction felt with?
R139 - G3/89 made equivalent to A123(2)
Where is publication dealt with?
Art 93
R67 withdrawal before
R68 types
