Rule 49 - OJ 2005, 126

Notice from the European Patent Office dated 22 December 2004 concerning the introduction of electronic publication of European patent applications (A-documents) and European patent specifications (B-documents)

- OJ 2005, 126 -

In its decision of 9 December 2004¹, the Administrative Council of the European Patent Organisation amended the EPC Implementing Regulations and approved amendments to the procedure concerning the publication of European patent documents.

This notice provides details of these amendments and the applicable transitional provisions.

Electronic publication

1. Since the deployment of the ESPACE® technology in the 1990's, the number of copies of each patent document printed has fallen constantly and rapidly. The Internet and magneto-optical media are now the main publication means used by patent offices to fulfil their legal obligation to publish.

A publication server has been available since 1 January 2005 on which all European patent applications (EP-A) and European patent specifications (EP-B) published by the Office are offered every week. These documents are fully downloadable in SGML/XML and PDF formats.²

The publication server is accessible via a dedicated portal on the EPO homepage, or directly under

https://publications.european-patent-office.org

This service is free of charge.

It has therefore been decided to discontinue the publication of these documents on paper (see Decision of the President of the EPO dated 22 December 2004 concerning the form of publication of European patent applications, European search reports and European patent specifications³). As from 1 April 2005, applicants will no longer receive a paper copy of the patent application. A copy of the patent specification will only be sent automatically to patent proprietors if the communication under Rule 51(4) EPC was issued before 1 April 2005 (see below). In this context it was necessary to amend Rule 54 EPC.

Subscriptions for paper copies of the complete collection or according to IPC classes ceased to be available at the end of 2004.

2. According to current Rule 54(1) EPC, the EPO issues a certificate for a European patent to the proprietor with the specification of the European patent as an annex. Once paper publication ceases, no further patent specifications will be issued systematically in paper form. Thus, no patent specification will be annexed to the certificate for a European patent.

Under Rule 54 EPC as amended and the Decision of the President of the EPO dated 22 December 2004 concerning the content and form of the certificate for a European patent, and the procedure for issuing it⁴, the certificate for the European patent will continue to be supplied to the proprietor in paper form. If there is more than one proprietor, a certificate will be issued to each of them. If specially requested, each proprietor will receive the certificate for the European patent together with a copy of the patent specification. This request is free of charge if it is filed within the time limit under Rule 51(4) or under Rule 58(5) or (6) EPC. The proprietor may also request that a duplicate copy of the European patent certificate with the patent specification attached or a certified copy of the patent specification be supplied to him on payment of an administrative fee. Further copies of the European patent specification are available on request from the Vienna sub-office on payment of the prescribed fee.

The new text of the certificate for a European patent gives the number of the European patent and refers to the invention described in the specification and the contracting states designated in it. This is followed by the name and address of the proprietor of the patent. Where there is more than one proprietor, all names are mentioned. The reference to the annexed patent specification has been deleted.

The same applies in respect of the certificate for the European patent in amended form.

3. Rule 54 EPC as amended and the corresponding decisions of the President of the EPO will enter into force on 1 April 2005. The new Rule will apply to all applications and patents in respect of which no communication under Rule 51(4) or 58(5) EPC has been issued at that date.

4. Applicants are hereby informed that the above changes do not affect the time of completion of the technical preparations for publication of the application (Rule 48(1) EPC) or of the patent specification (Rule 53 EPC). Applicants are further informed that, contrary to past procedure, any changes made after completion of the technical preparations (eg transfer of rights, withdrawal of designations) will no longer be noted by hand on the patent specification annexed to the certificate, but will result in the issue of a corrected title page of the specification. This new procedure concerns all patents granted on or after 1 April 2005, irrespective of the date of issue of the Rule 51(4) EPC communication.