Rule 51(4) - OJ 2005, 129

Notice dated 22 December 2005
concerning the amendment of Rule 51(4) EPC

- OJ 2005, 129 -

According to Rule 51(4) EPC as amended, the time limit set in the communication under Rule 51(4) EPC will be four months without possibility of extension for all applications.

Currently, the applicant has a period of four months in which to fulfil the requirements mentioned in Rule 51(4) EPC. This period can be extended to six months without the need for reasons. Once these six months have expired, the applicant can further extend the time limit by availing himself of further processing under Article 121 EPC.

While a lengthy period may in certain situations be justified, namely where the applicant or attorney has to deal with objections raised by the examining division and has to find solutions overcoming these objections, possibly necessitating discussions with several parties at different locations, such a lengthy period is not necessary once the Rule 51(4) EPC communication has been issued. Moreover, at this stage third parties, who now know that a patent can be granted, have an interest in learning as soon as possible in which states the patent will be validated, and the EPO has an interest in closing the file.

A shortening of the maximum available time limit is therefore justified, as the tasks mentioned above can also be performed shortly after receipt of the Rule 51(4) EPC communication.

As the time limit will still be a time limit set by the Office, further processing will remain available. Thus, if an applicant has genuine problems meeting the time limit, he could still wait for a loss-of-rights communication and request further processing.

It may in certain cases be necessary to submit a translation of the priority document within the Rule 51(4) EPC time limit. However, applicants should not delay translation of the priority document until this stage of the proceedings. If the translation of the priority document is not received within the Rule 51(4) EPC time limit, applicants will continue to receive a communication under Rule 41(1) EPC.

Rule 51(4) EPC as amended will enter into force on 1 April 2005 and apply to all applications for which no communication under present Rule 51(4) EPC has been issued at that date.