Errors in the September 2010 issue

Update: 11 May 2011

Errors in R.164(2).
The texts has some clerical errors. Replace by:

Where the examining division finds that the application documents on which the European grant procedure is to be based do not meet the requirements of unity of invention, or protection is sought for an invention not covered by the international search report or, as the case may be, by the supplementary international search report or supplementary European search report, it shall invite the applicant to limit the application to one invention covered by the international search report, the supplementary international search report or the supplementary European search report.

Update: 25 February 2011

 Fee table at Art.76, R.38(1), R.57

Row "Filing fee", column "Time limit": R36() should be R.36(3)
Row "Filing fee"and row "Search fee", column "time limit": R38 should be R.38(1)

Fee table at Art.97(1), R.71(6)
Row "Claims fee", column "Fee": replace R162) by R162(1)

Fee table at Art.99

Row "opposition fee", column "Reduction": add "the 20% reduction is only availbale for opponents, not for intervenors".

Fee table at Art.112a(4)

Column "Reduction": A14(2) should be A14(4)

Fee table at Art.94(1), Art.99, Art.99(1), Art.105a, Art.106, Art.108, Art.112a(4), R.17(2, R.36(3), R.38(1), R.70(1)
Column "Reduction": replace Rf12(1) by Rf14(1)

Table at R.67(1)

 Replace "A.G. Vol.I 240" by "A.G. Vol.I 9.013" 

Update: 12 February 2011

Preface (2nd page), Art.54(4) EPC 1973, Art.54(5), R.23a EPC1973, Art.65, Art.99, Art.101, Art.103, Art.104, Art.105, Art.105a, Art.105b, Art.105c, Art.112a, Art.121, Art.122, Art.138, Art.150, Art.151, Art.152, Art.153, Art.154(3) EPC973, Art.155(3) EPC1973
Replace in the sections on Transitional provisions ‘OJ 2007, 197’ by: ‘OJ 2007, SE1, 197’

R.40(1), R.40(2), R.40(3), R.55
The tables under R.40(1)-(3) show that re-establishment is not possible. This is not correct (also stated in the cited OJ 2009, 486, item 6). Better replace the text in the last column by: ‘Yes, also consider to re-file’. The same correction should be made in the last three rows of R.55.

Art.105
In the first table under Art.105a rows “Correct deficiency noted…” and “File translation …” the last column should be changed to Yes (re-establishment is possible).

R.95
In the tables under R.95(2) and (3) it is indicated that Further Processing is possible and Re-establishment is then excluded under R.136(3). This is wrong. Further processing is not possible since R.95 relates to a granted patent and not an application (Art.121 is limited to applications). Thus, re-establishment is possible.

R.159
Item 10. Supplying a translation
Add:
See note 8 above, as an exception to the principle of R.136(3) that excludes re-establishment when further processing is possible, after the entry into force of EPC 2000 re-establishment of rights can be requested for filing of a translation of the international application (see "Implementation of the decision of the Administrative Council of 28 June 2001 on the transitional provision under Art.7 of the revision conference", item 7.1. This exception is based on Art.150(2) EPC that states that in case of conflict, PCT prevails.

Item 12 Filing fee
Add: See note 8 above, as an exception to the principle of R.136(3) that excludes re-establishment when further processing is possible, after the entry into force of EPC 2000 re-establishment of rights can be requested for payment of the national fee (= filing fee) for the international application (see "Implementation of the decision of the Administrative Council of 28 June 2001 on the transitional provision under Art.7 of the revision conference", item 7.1. This exception is based on Art.150(2) EPC that states that in case of conflict, PCT prevails.
Correct:
The table states that no re-establishment is possible. Correct this to: Yes, (R.49.6 PCT, prevailing over R.136(3) EPC based on Art.150(2) EPC.


R.160(1)
Second table, first row (Filing fee), states that no re-establishment is possible. Correct this to the text of the first table: Yes, (R.49.6 PCT, prevailing over R.136(3) EPC based on Art.150(2) EPC.

R.160(2) (from 1 April 2009)
The text of the rule should be:
If the European Patent Office notes that the application is deemed to be withdrawn under paragraph 1, it shall communicate this to the applicant. Rule 112, paragraph 2, shall apply mutatis mutandis.

Example R.51(3)
Replace with the following:

Recent changes, relevant for EQE 2011

Add under G 2/08 item 6.3 dosage regime under Art.53; under item 2 Art.54(4); under item ‘dosage regime’ under Art.54(5):
OJ 2010, 514 The three-month period set by the board will expire on 28 January 2011. Consequently, for inventions relating to second or further medical uses, European patents may not be granted in respect of European or international patent applications having a filing date or earliest priority date of 29 January 2011 or later if they contain Swiss-type claims. If any such application contains Swiss-type claims, the applicant will be invited to correct this deficiency. In accordance with Article 76(1), second sentence, EPC, the relevant date for divisional applications is the date of filing or the earliest priority date of the parent application.

Replace existing R.36(1) by:

R.36(1) The applicant may file a divisional application relating to any pending earlier European patent application, provided that:
(a) the divisional application is filed before the expiry of a time limit of twenty-four months from the Examining Division's first communication under Article 94, paragraph 3, and Rule 71, paragraph 1 and 2, or Rule 71, paragraph 3, in respect of the earliest application for which a communication has been issued, or
(b) the divisional application is filed before the expiry of a time limit of twenty-four months from any communication in which the Examining Division has objected that the earlier application does not meet the requirements of Article 82, provided it was raising that specific objection for the first time.
OJ 2010, 568 This decision shall enter into force on 26 October 2010. Without prejudice to Article 3 of decision CA/D 2/09 of the Administrative Council, Rule 36, paragraph 1, as amended by Article 1 of this decision, shall apply to divisional applications filed on or after 1 April 2010.

Replace in Art.153(3), 153(4), R.159(1) section 9, Art.14(3) the preliminary headnote of G 4/08 by:

G 4/08 1 If an international patent application has been filed and published under the PCT in one official language of the EPO, it is not possible, on entry into the European phase, to file a translation of the application into one of the other two EPO official languages.
G 4/08 2: In written proceedings on a European patent application or an international application in the regional phase, EPO departments cannot use an EPO official language other than the language of proceedings used for the application pursuant to Article 14(3) EPC.

Remove the reference of J18/90 2 (overruled by G 4/08) in R.3(1)