Rule 108 - OJ 2005, 130

Notice from the European Patent Office dated 22 December 2004
concerning the changes to Rule 108 EPC

- OJ 2005, 130 -

The purpose of Rule 108 EPC as amended is to reintroduce for Euro-PCT applications entering the European phase a two-month period for the payment of designation fees with a surcharge corresponding to the period of grace under Rule 85a(2) EPC.

Designation fees for Euro-PCT applications entering the European phase must be paid within the time limit pursuant to Rule 107(1)(d) EPC. This time limit is either thirty-one months from the filing date (or, if priority has been claimed, from the priority date) or six months from the date of publication of the international search report, if the latter period expires later. If a designation fee is not paid or no designation fees at all are paid within this time limit, the designation/application is deemed to be withdrawn and the applicant receives a communication of loss of rights pursuant to Rule 108(3) EPC. If the applicant pays the designation fees and a surcharge within two months of notification of the communication of loss of rights, the loss of rights is deemed not to have occurred (see Rule 108(3) EPC). However, a communication of loss of rights is not issued if the applicant has dispensed with it. This is generally done by means of a statement to this effect (pre-printed on EPO Form 1200 - Entry into the European phase) for cases in which the applicant intends to pay fewer than seven designation fees. Hence, where such a statement has been made, it is not possible for any loss of rights to be remedied because there is no time limit comparable to the grace period of Rule 85a(2) EPC. Moreover, further processing and re-establishment of rights are excluded in respect of the time limit under Rule 107(1)(d) EPC.

The practical consequence of this is that applicants who, having made the statement in EPO Form 1200, pay fewer than seven designation fees prior to expiry of the applicable time limit have no opportunity to add further designations within a grace period. They do however have this opportunity in respect of European applications under Rule 85a(2) EPC.

Equal treatment of European applications and Euro-PCT applications is now ensured by the introduction of a new paragraph 4 in Rule 108 EPC. If the applicant has dispensed with a communication of loss of rights under Rule 108(3) EPC, he will still have a period of two months from expiry of the time limit under Rule 107(1)(d) EPC within which the loss of rights can be remedied by payment of designation fees with a surcharge. This period corresponds to the period of grace under Rule 85a(2) EPC.

Rule 108 EPC as amended will apply to all international applications entering the European phase for which, on 1 April 2005, not all designation fees as prescribed in Rule 107(1)(d) EPC have been validly paid and the time limit provided for under that Rule has not yet expired.