sou · GRB366d2 · 2004-01-01 00:00:00 — (4)In the case of an intervention under Article 105, the Opposition Division may dispense with the application of paragraphs 1 to 3. Without prejudice to Rule 87, the description, claims and drawings may be amended, provided that the amendments are occasioned by a ground for opposition under Article 100, even if that ground has not been invoked by the opponent. (1)The Opposition Division shall examine those grounds for opposition which are invoked in the opponent's statement under Rule 55a, paragraph 2(c). Grounds for opposition not invoked by the opponent may be examined by the Opposition Division of its own motion if they would prejudice the maintenance of patent. (2)Communications under Article 101, paragraph 1, second sentence, and all replies thereto shall be sent to all parties. (3)In any communication to the proprietor of patent under Article 101, paragraph 1, second sentence, he shall, where necessary, be given the opportunity to amend, where appropriate, the description, claims and drawings. Where necessary, the communication shall contain a reasoned statement covering the grounds against the maintenance of patent. Maintenance of patent in amended form (1)Before the Opposition Division decides to maintain patent as amended, it shall inform the parties of the text in which it intends to maintain the patent and shall invite them to file their observations within two months if they disapprove of that text. (2)If a party disapproves of the text communicated by the Opposition Division, examination of the opposition may be continued. Otherwise, the Opposition Division shall, on expiry of the period under paragraph 1, invite the proprietor of the patent to pay the prescribed fee and to file a translation of any amended claims in the official languages of Patent Office other than the language of the proceedings, within a period to be specified. This invitation shall indicate the designated Contracting States which require a translation under Article 65, paragraph 1. (3)If the acts required under paragraph 2 are not performed in due time, they may still be performed within two months of a communication concerning the failure to observe the time limit, provided that a surcharge is paid within this period. Otherwise, the patent shall be revoked. (4)The decision to maintain patent as amended shall state which text of the patent forms the basis for the decision. Documents referred to by a party to opposition proceedings shall be filed together with the notice of opposition or the written submissions in two copies. If such documents are neither enclosed nor filed in due time upon invitation by Patent Office, it may decide not to take into account any arguments based on them. Continuation of the opposition proceedings by Patent Office of its own motion (1)If patent has been surrendered in all the designated Contracting States or has lapsed in all those States, the opposition proceedings may be continued at the request of the opponent filed within two months of a communication from Patent Office informing him of the surrender or lapse. (2)In the event of the death or legal incapacity of an opponent, the opposition proceedings may be continued by Patent Office of its own motion, even without the participation of the heirs or legal representatives. The same shall apply where the opposition is withdrawn. Rule 20 shall apply to any transfer of patent made during the opposition period or during opposition proceedings. Documents in opposition proceedings Part III, Chapter II, of the Implementing Regulations shall apply to documents filed in opposition proceedings. Content and form of the new specification of patent The new specification of patent shall include the description, claims and drawings as amended. Rule 53, paragraphs 2 and 3, and Rule 54 shall apply. New certificate for a European patent (1)The apportionment of costs shall be dealt with in the decision on the opposition. Such apportionment shall only take into consideration the expenses necessary to assure proper protection of the rights involved. The costs shall include the remuneration of the representatives of the parties. (2)The Opposition Division shall, on request, fix the amount of costs to be paid under a final decision apportioning them. A bill of costs, with supporting evidence, shall be attached to the request. Costs may be fixed once their credibility is established. (3)A request for a decision by the Opposition Division may be filed within one month of the communication on the fixing of costs under paragraph 2. The request shall be filed in writing and state the grounds on which it is based. It shall not be deemed to be filed until the prescribed fee has been paid. 4) The Opposition Division shall decide on the request under paragraph 3 without oral proceedings. Intervention of the assumed infringer (1)Notice of intervention shall be filed within three months of the date on which proceedings referred to in Article 105 are instituted. (2)Notice of intervention shall be filed in a written reasoned statement; Rule 55a shall apply mutatis mutandis. It shall not be deemed to have been filed until the opposition fee has been paid. Procedure for limitation or revocation The subject of limitation or revocation proceedings under Article 105a shall be patent as granted or as amended in opposition or limitation proceedings before Patent Office. Competence of the Examining Division Decisions on requests for limitation or revocation of patent under Article 105a shall be taken by the Examining Division. Article 18, paragraph 2, shall apply mutatis mutandis. Requirements of the request (1)The request for limitation or revocation of a European patent shall be filed in writing. (2)The request shall contain: (a)particulars of the proprietor of patent making the request (the requester) as provided in Rule 26, paragraph 2(c), and an indication of the Contracting States for which the requester is the proprietor of the patent; (b)the number of the patent whose limitation or revocation is requested, and a list of the Contracting States in which the patent has taken effect; c) where appropriate, the names and addresses of the proprietors of the patent for those Contracting States in which the requester is not the proprietor of the patent, and evidence that the requester is entitled to act on their behalf in the proceedings; (d)where limitation of the patent is requested, the complete text of the amended claims and, as the case may be, of the description and drawings as amended; (e)where the requester has appointed a representative, particulars as provided in Rule 26, paragraph 2(d). Precedence of opposition proceedings (1)The request for limitation or revocation shall be deemed not to have been filed if opposition proceedings in respect of the patent are pending at the time of filing the request. (2)If, at the time of filing an opposition to a European patent, limitation proceedings in respect of that patent are pending, the Examining Division shall terminate the limitation proceedings and order the reimbursement of the limitation fee. Rejection of the request as inadmissible If the Examining Division finds that the request for limitation or revocation fails to comply with the requirements of Rule 63d, it shall invite the requester to correct the deficiencies noted, within a period to be specified. If the deficiencies are not corrected in due time, the Examining Division shall reject the request as inadmissible. Decision on the request (1)If a request for revocation is admissible, the Examining Division shall revoke the patent and communicate this to the requester. (2)If a request for limitation is admissible, the Examining Division shall examine whether the amended claims constitute a limitation vis-à-vis the claims as granted or amended in opposition or limitation proceedings and comply with Article 84 and Article 123, paragraphs 2 and 3. If the request does not comply with these requirements, the Examining Division shall give the requester one opportunity to correct any deficiencies noted, and to amend the claims and, where appropriate, the description and drawings, within a period to be specified. (3)If a request for limitation is allowable under paragraph 2, the Examining Division shall communicate this to the requester and invite him to pay the prescribed fee and to file a translation of the amended claims in the official languages of Patent Office other than the language of the proceedings, within a period to be specified; Rule 58a, paragraph 3, first sentence, shall apply mutatis mutandis. If the requester performs these acts in due time, the Examining Division shall limit the patent. (4) If the requester does not respond in due time to the communication issued under paragraph 2, or if the request for limitation is not allowable, or if the requester fails to perform the acts required under paragraph 3 in due time, the Examining Division shall reject the request. Content and form of the amended European patent specification The amended European patent specification shall include the description, claims and drawings as amended. Rule 53, paragraphs 2 and 3, and Rule 54 shall apply. IMPLEMENTING REGULATIONS TO PART VI OF THE Appeal against apportionment and fixing of costs (1)The apportionment of costs of opposition proceedings cannot be the sole subject of an appeal. (2)A decision fixing the amount of costs of opposition proceedings cannot be appealed unless the amount exceeds that of the fee for appeal. Surrender or lapse of the patent The decision of an Opposition Division may be appealed even if patent has been surrendered in all the designated Contracting States or has lapsed in all those States. Content of the notice of appeal and the statement of grounds (1) The notice of appeal shall contain: (a)particulars of the appellant as provided in Rule 26, paragraph 2(c); (b)an indication of the decision impugned, and (c)a request defining the subject of the appeal. (2) In the statement of grounds of appeal the appellant shall indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based. (1)Unless otherwise provided, the provisions relating to proceedings before the department which has taken the decision impugned shall apply to appeal proceedings. (2)In the examination of the appeal shall invite the parties, as often as necessary, to file observations, within a period to be specified, on communications issued by itself or observations submitted by another party. (3)If the applicant fails to reply in due time to an invitation under paragraph 2, patent application shall be deemed to be withdrawn, unless the decision impugned was taken by the Legal Division. Rejection of the appeal as inadmissible (1)If the appeal does not comply with Articles 106 to 108, Rule 63i or Rule 64, paragraph 1(b) or (c) or paragraph 2, shall reject it as inadmissible, unless any deficiency has been remedied before the relevant period under Article 108 has expired. (2)If notes that the appeal does not comply with Rule 64, paragraph 1(a), it shall communicate this to the appellant and shall invite him to remedy the deficiencies noted within a period to be specified. If the deficiencies are not remedied in due time, shall reject the appeal as inadmissible. Form of decision of The decision shall be authenticated by the Chairman of the competent employee of the registry of , either by their signature or by any other appropriate means. The decision shall contain: (a)a statement that it is delivered by ; (b)the date when the decision was taken; (c)the names of the Chairman and of the other members of taking part; (d)the names of the parties and their representatives; (e)a statement of the issues to be decided; (f)a summary of the facts; (g)the reasons; (h)the order of , including, where appropriate, a decision on costs. Reimbursement of appeal fees (1) The appeal fee shall be reimbursed (a)in the event of interlocutory revision or where deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation, or (b)if the appeal is withdrawn before the filing of the statement of grounds of appeal and before the period for filing that statement has expired. (2) The department whose decision is impugned shall order the reimbursement if it revises its decision and considers reimbursement equitable by reason of a substantial procedural violation. In all other cases, matters of reimbursement shall be decided by . Petitions for review by Further fundamental procedural defects A fundamental procedural defect under Article 112a, paragraph 2(d), may have occurred where , (a)contrary to Article 116, failed to arrange for the holding of oral proceedings requested by the petitioner, or (b)decided on the appeal without deciding on a request relevant to that decision. A petition for review may be based on Article 112a, paragraph 2(e), if a competent court or authority has finally established that the criminal act occurred; a conviction is not necessary. Obligation to raise objections A petition under Article 112a, paragraph 2(a) to (d), is only admissible where an objection in respect of the procedural defect was raised during the appeal proceedings and dismissed by , except where such objection could not be raised during the appeal proceedings. Contents of the petition for review (1) The petition shall contain: (a) particulars of the petitioner as provided in Rule 26, paragraph 2(c); (b) an indication of the decision to be reviewed. (2) The petition shall indicate the reasons for setting aside the decision of facts and evidence on which the petition is based. Examination of the petition (1)If the petition does not comply with Article 112a, paragraphs 1, 2 or 4, Rule 67c or Rule 67d, shall reject it as inadmissible, unless any defect has been remedied before the relevant period under Article 112a, paragraph 4, expires. (2)If the petition is allowable, shall set aside the decision of the re-opening of the proceedings before responsible under Rule 10, paragraph 4. may order that members of who participated in taking the decision set aside shall be replaced. Procedure in dealing with petitions for review (1) In proceedings under Article 112a the provisions relating to proceedings before the Boards of Appeal shall apply, unless otherwise Rule 71, paragraph 1, second sentence, and Rule 84, paragraph 2, shall not apply. (a)consisting of two legally qualified members and one technically qualified member shall examine all petitions for review and shall reject those which are clearly inadmissible or unallowable; such decision shall require unanimity; (b)consisting of four legally qualified members and one technically qualified member shall decide on any petition not rejected under sub- paragraph (a). (3) as composed according to paragraph 2(a) shall decide without the involvement of other parties and on the basis of the petition as filed. Reimbursement of the fee for petitions for review shall order the reimbursement of the fee for a petition for review if the proceedings before the Boards of Appeal are reopened, unless such reimbursement is inequitable. IMPLEMENTING REGULATIONS TO PART VII OF THE Decisions and communications of Patent Office 1) Where oral proceedings are held before Patent Office, the decision may be given orally. Subsequently the decision in writing shall be notified to the parties. (2) Decisions of Patent Office which are open to appeal shall be reasoned and shall be accompanied by a written communication pointing out the possibility of appeal and drawing the attention of the parties to Articles 106 to 108, the text of which shall be attached. The parties may not invoke the omission of the communication. Noting of loss of rights (1)If Patent Office notes that a loss of rights has occurred, without any decision concerning the refusal of patent application or the grant, revocation or maintenance of patent, or the taking of evidence, it shall communicate this to the party concerned. (2)If the party concerned considers that the finding of Patent Office is inaccurate, it may, within two months of the communication under paragraph 1, apply for a decision on the matter. Patent Office shall take such decision only if it does not share the opinion of the party requesting it; otherwise, it shall inform that party. Signature, name, seal (1) decisions, summonses, notices and communications from Patent Office shall be signed by and state the name of the employee responsible. (2) Where a document referred to in paragraph 1 is produced by the employee responsible using a computer, a seal may replace the signature. Where the document is produced automatically by a computer, the employee's name may also be dispensed with. The same shall apply to pre- printed notices and communications. Observations by third parties Observations by third parties (1)observations by a third party shall be filed in writing and state the grounds on which they are based. (2)such observations shall be communicated to the applicant for or proprietor of the patent, who may comment on them. Oral proceedings and taking of evidence Summons to oral proceedings (1)The parties shall be summoned to oral proceedings under Article 116, drawing their attention to paragraph 2 of this Rule. At least two months' notice of the summons shall be given, unless the parties agree to a shorter period. (2)If a party duly summoned to oral proceedings before Patent Office does not appear as summoned, the proceedings may continue without it. Preparation of oral proceedings (1)When issuing the summons, Patent Office shall draw attention to the points which in its opinion need to be discussed for the purposes of the decision to be taken. At the same time a final date for making written submissions in preparation for the oral proceedings shall be fixed. Rule 84 shall not apply. New facts and evidence presented after that date need not be considered, unless admitted on the grounds that the subject of the proceedings has changed. (2)If the applicant or patent proprietor has been notified of the grounds prejudicing the grant or maintenance of the patent, he may be invited to submit, by the date specified in paragraph 1, second sentence, documents which meet the requirements of the Convention. Paragraph 1, third and fourth sentences, shall apply mutatis mutandis. Decision on taking of evidence Where Patent Office considers it necessary to hear a party, witness or expert, or to carry out an inspection, it shall take a decision to this end, setting out the investigation which it intends to carry out, relevant facts to be proved and the date, time and place of the investigation. If the hearing of a witness or expert is requested by a party, the decision shall specify the period within which the requester must make known the name and address of any witness or expert concerned. Summons to give evidence before (1)A summons to give evidence before Patent Office shall be issued to the parties, witnesses or experts concerned. (2)At least two months' notice of a summons issued to a party, witness or expert to testify shall be given, unless they agree to a shorter period. The summons shall contain: (a)an extract from the decision under Rule 72, indicating the date, time and place of the investigation ordered and stating the facts regarding which parties, witnesses or experts are to be heard; (b)the names of the parties and particulars of the rights which the witnesses or experts may invoke under Rule 74, paragraphs 2 to 4; (c)an indication that the party, witness or expert may request to be heard by a competent court of his country of under Rule 72c, and an invitation to inform Patent Office, within a period to be specified, whether he is prepared to appear before it. Examination of evidence before (1)The Examining Division, Opposition Division or may commission one of its members to examine the evidence adduced. (2)Before a party, witness or expert may be heard, he shall be informed that Patent Office may request the competent court in the country of of the person concerned to re- examine his testimony under oath or in an equally binding form. (3)The parties may attend an investigation and may put relevant questions to the testifying party, witness or expert. Hearing by a competent national court (1) A party, witness or expert who is summoned before Patent Office may request the latter to allow him to be heard by a competent court in his country of . If this is requested, or if no reply is received within the period specified in the summons, Patent Office may, in accordance with Article 131, paragraph 2, request the competent court to hear the person concerned. (2) If a party, witness or expert has been heard by Patent Office, the latter may, if it considers it advisable for the testimony to be given under oath or in an equally binding form, issue a request under Article 131, paragraph 2, to the competent court in the country of of the person concerned to re-examine his testimony under such conditions. 3) When Patent Office requests a competent court to take evidence, it may request the court to take the evidence under oath or in an equally binding form and to permit a member of the department concerned to attend the hearing and question the party, witness or expert either through the intermediary of the court or directly. (1)Patent Office shall decide in what form the opinion of an expert whom it appoints shall be submitted. (2)The terms of reference of the expert shall include: (a)a precise description of his task; (b)the period specified for the submission of his opinion; (c)the names of the parties to the proceedings; (d)particulars of the rights which he may invoke under Rule 74, paragraphs 2 to 4. (3)A copy of any written opinion shall be submitted to the parties. (4)The parties may object to an expert. The department of Patent Office concerned shall decide on the objection. Costs of taking of evidence (1)The taking of evidence by Patent Office may be made conditional upon deposit with it, by the party requesting the evidence to be taken, of an amount to be fixed by reference to an estimate of the costs. (2)Witnesses or experts who are summoned by and appear before Patent Office shall be entitled to appropriate reimbursement of expenses for and subsistence. An advance for these expenses may be granted to them. This shall also apply to persons who appear before Patent Office without being summoned by it and are heard as witnesses or experts. (3)Witnesses entitled to reimbursement under paragraph 2 shall also be entitled to appropriate compensation for loss of earnings, and experts to fees for their work. These payments shall be made to the witnesses and experts after they have fulfilled their duties or tasks. (4)shall lay down the details implementing paragraphs 2 and 3. amounts due under these provisions shall be paid by Patent Office. (1)On request, Patent Office may, without delay, hear oral evidence or conduct inspections, with a view to conserving evidence of facts liable to affect a decision which it may be called upon to take with regard to a European patent application or a European patent, where there is reason to fear that it might subsequently become more difficult or even impossible to take evidence. The date on which the measures are to be taken shall be communicated to the applicant for or proprietor of the patent in sufficient time to allow him to attend. He may ask relevant questions. (2)The request shall contain: (a)particulars of the requester as provided in Rule 26, paragraph 2(c); (b)sufficient identification of patent application or European patent in question; (c)an indication of the facts in respect of which evidence is to be taken; (d)particulars of the means of giving or obtaining evidence;