IP Law News

How to reduce or avoid payment of some EPO Official fees for registration of European patent Search fee , Part 2

According to the regulations related to European Patent Convention (EPC) , when EPO did not act as International Search Authority (ISA) or Supplementary International Search Authority (SISA) for an international application than in the European National Phase one  supplementary European search report is to be established,  for which one Search fee in amount of EUR 1.285,- is to be paid.

In some of such cases the search fee may be reduced. The reductions of the search fee may be summarized as follows:

European patent registration - Persons entitled to appeal and to be parties to appeal proceedings

According to Article 107 of the European Patent Convention (EPC),

Any party to proceedings adversely affected by a decision may appeal. Any other parties to the proceedings shall be parties to the appeal proceedings as of right. 

 

Prepared by European Patent Registration and Consulting Services GmbH

www.european-patent-registration.com

European patent registration - Decisions subject to appeal

According to Article 106 of the European Patent Convention (EPC) ,

(1)

An appeal shall lie from decisions of the Receiving Section, Examining Divisions, Opposition Divisions and the Legal Division. It shall have suspensive effect. 

(2)

A decision which does not terminate proceedings as regards one of the parties can only be appealed together with the final decision, unless the decision allows a separate appeal. 

(3)

Publication of the amended specification of the European patent

According to Article 105 c) of the European Patent Convention (EPC) If the European patent is limited under Article 105b, paragraph 2 of EPC , the European Patent Office (EPO) shall publish the amended specification of the European patent as soon as possible after the mention of the limitation has been published in the European Patent Bulletin.

 

Prepared by European Patent Registration and Consulting Services GmbH

Limitation or revocation of the European patent

According to Article 105 b) of the European Patent Convention (EPC) ,

(1)

The European Patent Office (EPO) shall examine whether the requirements laid down in the EPC Implementing Regulations for limiting or revoking the European patent have been met. 

(2)

If the European Patent Office (EPO) considers that the request for limitation or revocation of the European patent meets these requirements, it shall decide to limit or revoke the European patent in accordance with the Implementing Regulations. Otherwise, it shall reject the request. 

(3)

European patent registration - Request for limitation or revocation

According to Article 105 a) of the European Patent Convention (EPC)

(1)

At the request of the proprietor, the European patent may be revoked or be limited by an amendment of the claims. The request shall be filed with the European Patent Office (EPO)  in accordance with the EPC Implementing Regulations. It shall not be deemed to have been filed until the limitation or revocation fee has been paid. 

(2)

The request may not be filed while opposition proceedings in respect of the European patent are pending. 

 

European patent registration - Intervention of the assumed infringer

According to Article 105 of the European Patent Convention (EPC)

(1)

Any third party may, in accordance with the EPC Implementing Regulations, intervene in opposition proceedings after the opposition period has expired, if the third party proves that  

(a)

proceedings for infringement of the same patent have been instituted against him, or 

(b)

following a request of the proprietor of the patent to cease alleged infringement, the third party has instituted proceedings for a ruling that he is not infringing the patent. 

(2)

European patent registration - Costs in the opposition proceedings

According to Article 104 of the European Patent Convention (EPC)

(1)

Each party to the opposition proceedings shall bear the costs it has incurred, unless the Opposition Division, for reasons of equity, orders, in accordance with the Implementing Regulations, a different apportionment of costs. 

(2)

The procedure for fixing costs shall be laid down in the EPC Implementing Regulations. 

(3)

European patent registration - Publication of a new specification of the European patent

According to Article 103 of the European Patent Convention (EPC) , if the European patent is maintained as amended under Article 101, paragraph 3(a) of the EPC, the European Patent Office shall publish a new specification of the European patent as soon as possible after the mention of the opposition decision has been published in the European Patent Bulletin.

Prepared by European Patent Registration and Consulting Services GmbH

European patent registration - How to reduce or avoid payment of some EPO Official fees for registration of European patent Part III , Filing fee

According to the regulations related to European Patent Convention (EPC) , for filing one European patent application or for entering one International (PCT) application into European national phase one filing fee is to be paid.

One application can be filed to European Patent Office (EPO)  by mail, by fax in person  or in electronic form by using special EPO software.  

 

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