Author: Ben Hoyle

European Patent Attorney specialising in patents & designs for high-tech industries.

EPO Updates – Extension State Grace Period & Changes in EP-PCT Fees

Extension State Grace Period:

Where the deadline for paying designation/extension fees (i.e. the “normal period”) expires on or after 1 January 2010:

If the fee for an extension state has not been paid within the normal period, the applicant can pay the extension fee in combination with a 50% surcharge:

a) within two months of expiry of the basic period (“re-introduced grace period”) or

b) within two months of notification of a communication of loss of rights with regard to the omitted payment of a designation fee (applies at present).

[see http://www.epo.org/patents/law/legal-texts/journal/informationEPO/archive/20091102.html ]

Changes in EP-PCT Fees

From 1 January 2010, there are minor changes to the International Fee and E-Filing reductions for PCT applications filed at the EPO:
International filing fee: from EUR 848 to EUR 878
Fee per sheet in excess of 30: EUR 10 (unchanged)
Reductions:
* Electronic filing (the request being in character coded format) from EUR 128 to EUR 132
 * Electronic filing (in character coded format) from EUR 191 to EUR 198
Handling fee: from EUR 121 to EUR 132

Early Advent Present from the EPO

The EPO has released a draft version of the Guidelines for Examination that will come into force in April 2010:

http://www.epo.org/patents/law/legal-texts/guidelines-2010.html

Lest we forget that these Guidelines are not in force, and may change in whole or part, “DRAFT” is helpfully watermarked across each page.

My favourite sections (of the Complete PDF) so far include:
– pages 84 to 88 discussing the new divisional rules
– pages 121/122 and 385-387 on the Rule 161 changes
– page 182 on Internet Searches
– pages 211 to 216 on changes to Search Procedure
– pages 250/251 on the response to the Search Opinion
– pages 290/291/307 on R.43(2) communication
– pages 335 to 340 on Disclosure (incl. Internet and “non-traditional”)
– pages 354/355 on Inventive Step
– pages 403 to 406 on R.137(4) communication

More EPO Activity

There are some changes regarding international supplementary searches, fees and foreign searches for priority applications coming into force 2010/2011 you may like to be aware of:

International Supplementary Searches:
http://www.epo.org/patents/law/legal-texts/journal/decisions/archive/20091106.html?update=law
– fee for an international supplementary search from 1 July 2010.

R.161 is amended yet again before even coming into force:
http://www.epo.org/patents/law/legal-texts/journal/decisions/archive/2009109c.html?update=law
– now refers to international supplementary searches performed by the EPO; in force 1 April 2010.

http://www.epo.org/patents/law/legal-texts/journal/decisions/archive/20091106c.html?update=law
– refund for international supplementary search based on Nordic etc. search; in force 1 July 2010.

http://www.epo.org/patents/law/legal-texts/journal/decisions/archive/20091106b.html?update=law
– need for a supplementary European search dispensed with under A.153(7) where EPO has performed international supplementary search; in force from 1 July 2010.

Fee Changes:
http://www.epo.org/patents/law/legal-texts/journal/decisions/archive/20091109b.html?update=law
-appear to be simply increases in all fees from 1 April 2010.

Compulsory supply of search results for priority applications (R.141):
http://www.epo.org/patents/law/legal-texts/journal/decisions/archive/20091109.html?update=law
– R.70b sets a two month period in which to supply on invitation from the EPO; in force 1 Jan 2011.

Minor Changes to UKIPO PCT Fees from 15 Oct 09

From 15 October 2009, there are minor changes to the International Fee and E-Filing reductions for PCT applications filed at the UKIPO:

International Fee:
a) For the first 30 sheets: changes from: £808 to £753;
b) For each sheet over 30: changes from: £9 to £8;

Reductions for E-filing:
Electronic filing (not character code): changes from £122 to £113;
Electronic filing (character code): changes from £182 to £170;

Transmittal / search / priority-doc-prep fees are unchanged.

Patent Forms 9A & 10

Patent Forms 9A and 10 have been updated by the UKIPO to include a request for consent to share the results of the search / examination with other patent offices.

PF9A has a new section 7; PF10 a new section 4; each feature a simple “yes”/”no” check box. Updated forms can be found here. The forms came into force on 4 Oct 2009 (announcement in the Journal was provided today).

I believe worksharing deals have been arranged with the Australian and Canadian Patent Offices to allow office-led sharing of search/examination documentation. I do not know of any sanctions for withholding consent.

The blurb on the back of the forms is as follows:

“In order to promote efficient and high quality patent processing internationally, we are cooperating with other patent offices to share the results of examination where they are available. If you are requesting that substantive examination takes place before your application is published we may accordingly receive a request from another patent office for the details of the examination we have carried out before your application is published and we could not provide those details without your consent. Any sharing will be carried out on a confidential basis and the results will not become publicly available through the other patent office before publication takes place in the UK.”

In other news: from 4th October 2009, a £10 fee reduction will be introduced for e-filed UK patent applications or e-filed search or examination requests.  There is also a new Priority Document Access Service from WIPO and some amendments to Civil Procedure Rules (CPR) Part 63.

Someone has been busy.

EPO CII OU

The EPO has released some new material that maybe useful for those that work with computer-implemented inventions:

e-learning slide-show:
Part I: http://academy.epo.org/e_learning/cii_module_i/player.html
Part II: http://academy.epo.org/e_learning/cii_module_ii/player.html

and revised Patents for Software booklet: http://www.epo.org/about-us/publications/general-information/patents-for-software.html?update

Whilst the more cynical among you may see these as hastily-rushed out PR-tools for the public spotlight of G3/08, I was actually quite impressed by the slide-shows (apart from the (mis)pronunciation of “patent”). Together they last about half-an-hour and may be useful as training for those pre-EQE or as a refresher for those with upcoming Appeals/Oral Proceedings in the CII area. As a warning though, they do contain sounds (and moving images).