EPO

Question 1

What happens if an EP(GB) is amended or revoked in opposition proceedings?

Answer 1

It will be treated as amended or revoked under the UKPA.

However, an amedment made in French or German at the EPO will not be valid in the UK until a UK translation is filed.

Question 2

What happens if an EP(GB) is restored under the EPC?

Answer 2

It will also be restored in the UK.

However, third party rights can rise in the UK under s28A, as they would for a UK patent.

Also, any renewal fees that fell due in the interim will need to be paid within 2 months.

Question 3

How does address for service work at the EPO?

Answer 3

The address for service by default is the proprietor’s address. It is good practice to update the address for service so you get the correspondence.

Question 4

When will an EP(GB) application be considered as s2(3) prior art?

Answer 4

If it has a priority date before, but is published after then it is s2(3) prior art (NB it isn’t s2(3) prior art until it publishes).

It is irrelevant if the application is refused or the GB designation is withdrawn, it will still be considered s2(3) prior art.

i.e. no way to prevent s2(3) prior art problems if you have corresponding EP (filed first) and GB applications.

Question 5

Scenario:

The GB designation of an EP application is withdrawn but later re-established. In the intervening period a third party began using the invention.

Answer 5

During any period between the GB designation being withdrawn and then re-established, any third party who, in good faith, begins (or makes serious and effective preperations to begin) an otherwise infringing act in the UK, will have the same prior user rights as a UK application.

Question 6

What happens to an EP application if entitlement proceedings are filed in a convention country?

Answer 6

EPO will stay all prosecution of the application and limit the applicant’s ability to withdraw the application.

Renewal fees are not paused during this time - need to keep paying them (remember anyone can pay a renewal fee).