Other

Question 1

Can a notice of opposition be filed in a non-EPO language, and what are the translation requirements?

Answer 1

Yes, if the opponent qualifies for the language privilege under Article 14(4) EPC.

Explanation:
* Documents must normally be filed in an official EPO language (Rule 3(1) EPC).
* However, under Article 14(4) EPC, persons having their residence or principal place of business in an EPC Contracting State with a non-EPO official language (and nationals of that State resident abroad) may file time-limit documents in that national language.
* A notice of opposition qualifies because it must be filed within a time limit.

Translation requirement:
* A translation must be filed in any official EPO language (English, French or German).
* It does not have to be in the language of the proceedings.

The deadline for filing the translation is the later of:
(a) one month from filing the document, or
(b) expiry of the relevant time limit (Rule 6(2) EPC).

Question 2

What happens if a certified copy of an earlier application is not filed when a European patent application is filed by reference (Rule 40(3) EPC)?

Answer 2

The application will not be dealt with as a European patent application (Article 90(2) and Rule 55 EPC).
* This is not the same as being deemed withdrawn or refused.
* No filing date is accorded.

The certified copy must be filed within two months of filing (Rule 40(3) EPC).

No certified copy is required if the earlier application is already available at the EPO (e.g. Euro-direct or PCT filed with the EPO as receiving Office).

Alternatively, failure to file a required translation (Rule 40(3), second sentence; Rule 57(a) EPC), for example, leads instead to the application being deemed withdrawn.

Question 3

When is an international application published under the PCT if no priority is claimed?

Answer 3

• International publication takes place promptly after 18 months from the priority date (Article 21(2)(a) PCT).
• If no priority is claimed, the international filing date = priority date (Article 2(xi)(c) PCT).
• The 18-month period is calculated from that filing date (Rule 80.2 PCT).
• Publication always occurs after expiry of the 18-month period.
• The International Bureau normally publishes on Thursdays.

Result: Publication occurs on the first Thursday following expiry of the 18-month period.

Question 4

What does the International Preliminary Report on Patentability (Chapter II PCT) indicate about amendments, search, and its legal effect?

Answer 4

• The IPRP (Chapter II) identifies the basis (version and date of claims, description, drawings) on which it is established (Rules 70.2, 70.16 PCT).
• If amendments are filed without the required statement explaining their basis, the report may be established as if the amendments had not been made, and this will be indicated in the report.
• The International Preliminary Examining Authority normally performs a top-up search for relevant documents that became available after the international search report (Rule 66.1ter PCT).
• The IPRP provides an opinion on novelty, inventive step and industrial applicability, but
• It is not binding on elected Offices (Article 35(2) PCT).

Question 5

What are the requirements and consequences for claiming priority in a European patent application?

Answer 5

Requirements:

• File a declaration of priority (Article 88(1) EPC).
• Provide a certified copy of the previous application and its filing date (Rule 53(1) EPC).
• Certified copy must be filed within 16 months of the earliest priority date.

Consequences of non-filing:

• EPO will invite the applicant to file the certified copy within a period specified by the Office (≥2 months, ≤4 months; Rule 132(2) EPC).
• Failure to provide the copy within that period results in loss of the priority right (Article 90(5) EPC).
• The application is not deemed withdrawn.

Remedies:

• Further processing does not apply (Rule 135(2) EPC).
• Re-establishment of rights is available (Article 122, Rule 136 EPC).

Question 6

When must a translation of a previous application be filed to support a priority claim in a European patent application?

Answer 6

• A translation is only required if the previous application is not in an EPO official language and the validity of the priority is relevant to patentability.
• The EPO will invite the applicant to file the translation within a specified period (Article 88(1), Rule 53(3) EPC).
• Alternatively, the applicant may submit a declaration that the European application is a complete and exact translation of the earlier application (can be done via Form 1001).
• No translation is automatically required within 16 months of filing; it is triggered only upon EPO invitation.