Article 93 - OJ 1997, 479

Changes in EPO publications

- OJ 1997, 479 -

1. The 1997 fee reform, with its deferral of the date for paying designation fees¹, has prompted the Office to change the system for contracting state designation and to amend some of its publications accordingly.

2. The old system - a combination of express and precautionary designation - has been replaced as from 1 June 1997 by a system of express designation of all EPC contracting states. This takes the form of a pre-crossed box in Section 32 of the new EPO Request for Grant form².

3. The longer period for paying designation fees, together with the new designation system, means that now, when the application is published, all the contracting states are validly designated; only after publication do applicants decide which states they actually want to designate, by paying the individual fees (Article 91(4) EPC).

4. So in future, when an application is published in the Register of European Patents, the European Patent Bulletin, or as an A document, it will indicate as designated all the contracting states which belonged to the EPC on the filing date. Those for which designation fees are actually paid will be announced in the Register as soon as the Office ascertains this following expiry of the basic period under Article 79(2) EPC, or in other words about 7 months after publication of the European search report.

5. About 7 weeks later, these states will then be published as a "positive list" in the Bulletin, together with the publication number and IPC main class. If multiple applicants designate different states in a single application, this too will be indicated. The positive list will appear in the Bulletin's new Section I.5 under the heading "Designations and requests for extension confirmed through payment of fees by expiry of the period under Article 79(2) EPC".

6. If designation fees are paid during the periods of grace under Rule 85a EPC, the states in question will be entered without delay in the Register and in the Bulletin under Section I.12 ("Alterations and corrections"), either in sub-section I.12(6) or - if multiple applicants designate different states in a single application - in sub-section I.12(9).

7. Information about extension of European patents will be published in the Register (EPIDOS Information Register), Bulletin and A documents³, in the same way.

8. The positive list will be a permanent part of the Bulletin from mid-November 1997. The first publications under the new system will appear in December 1997. All EP applications filed as from 1 June 1997 will be published under the new system.

9. European first filings enjoying the longer period for paying designation fees (ie filing date 1 July 1996 or later) but filed before 1 June 1997 will be published as hitherto, and will therefore normally indicate the states expressly designated in the request for grant. Post-publication changes in their designation status will be indicated in the Register and Bulletin (Section I.5, positive list) once the relevant basic periods expire.

10. The above changes in EPO publications do not affect Euro-PCT applications.

Nor does the longer time limit for paying designation fees under Article 79(2) EPC apply to European divisional applications and filings under Article 61(1)(b) EPC (Rules 25(2) and 15(2) EPC); their designation status will therefore normally be clear on publication.