CELEX: 41989A0695(02)
Language: en
Date: 1989-12-15 00:00:00
Title: Implementing Regulations to the Convention for the European patent for the common market

Avis juridique important

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41989A0695(02)

Implementing Regulations to the Convention for the European patent for the common market  

Official Journal L 401 , 30/12/1989 P. 0028 - 0033

IMPLEMENTING REGULATIONSTO THE CONVENTION FOR THE EUROPEAN PATENT  FOR THE COMMONMARKETPART IIMPLEMENTING REGULATIONS TO PART I OF THE CONVENTIONCHAPTER  IORGANIZATION OF THE SPECIAL DEPARTMENTSRule 1Allocation of duties to the departments  of the firstinstance1.  The President of the European Patent Office shall determine the number of  Revocation Divisions. He shall allocate duties to these departments by reference to the  international classification. 2.  The President of the European Patent Office shall, with the agreement of the Select Committee  of the Administrative Council, determine in detail the duties for which the Patent Administration  Division is responsible pursuant to Article 7. 3.  In addition to the responsibilities vested in them under the Convention, the President of the  European Patent Office may allocate further duties to the Patent Administration Division and the  Revocation Divisions. 4.  The President of the European Patent Office may entrust to employees who are not technically or  legally qualified members the execution of individual duties falling to the Patent Administration  Division or the Revocation Divisions, and involving no technical or legal difficulties. Rule 2Administrative structure of the special departments1.  The Revocation Divisions may be  grouped together administratively with the Examining Divisions andOpposition Divisions so as to  form directorates, or may form a directorate together with the Patent Administration Division. 2.  The special departments may be grouped together administratively with other departments of the  European Patent Office so as to form Directorates-General or may form a separate  Directorate-General; in the latter case, Rule 12 (3) of the Implementing Regulations to the  European Patent Convention shall apply, but the appointment of a vice-president to the  Directorate-General shall be decided upon by the Select Committee of the Administrative Council. CHAPTER IILANGUAGES OF THE SPECIAL DEPARTMENTSRule 3Language of the proceedings1.  Rules 1 to  3, 5, 6 (2) and 7 of the Implementing Regulations to the European Patent Convention shall apply  mutatis mutandis to proceedings before the special departments. 2.  A reduction in the limitation fee, revocation fee or appeal fee shall be allowed the proprietor  of a patent or an applicant for revocation who avails himself of the options provided for in  Article 10 (4). The reduction shall be fixed in the Rules relating to Fees at a percentage of the  total of the fees. PART IIIMPLEMENTING REGULATIONS TO PART II OF THE CONVENTIONRule 4Suspension of  proceedingsRule 13 of the Implementing Regulations to the European Patent Convention shall apply  mutatis mutandis to limitation proceedings and revocation proceedings. Rule 5Entries regarding claims to the right to CommunitypatentsThe entries referred to in  Article 23 (4) shall be made: (a)  at the request of the registrar of the court before which the proceedings are instituted; (b)  at the request of the claimant or any other interested person. Rule 6Filing of translations and payment of fees in examination oropposition proceedings1.   When sending the invitation referred to in Rule 51 (6) of the Implementing Regulations to the  European Patent Convention, the European Patent Office shall also invite the applicant for the  patent to file, within the period set by it, the translations prescribed in Article 29 (1) and to  pay, within the same period, the fee for the publication of the translations of the claims. 2.  When sending the invitation referred to in Rule 58 (5) of the Implementing Regulations to the  European Patent Convention, the European Patent Office shall also invite the proprietor of the  patent to file, within the period referred to in the said paragraph, the translations prescribed in  Article 29 (2) and to pay the fee for the publication of the translations of the claims. 3.  The period for filing the translations prescribed in Article 30 (1) and (2) shall be three  months from the date of publication in the Community Patent Bulletin of the mention of the grant of  the Community patent or, as the case may be, of the decision on the maintenance of the Community  patent in amended form. 4.  If the acts required by paragraph 2 are not performed in due time they may still be validly  performed within two months of notification of the communication pointing out the failure to  observe the time limit, provided that within this two-month period an additional fee in accordance  with the Rules relating to Fees is paid. Rule 7Forwarding of translationsThe European Patent Office shall enter in the Register of  Community Patents the date on which the translations prescribed in Article 30 are filed. Copies of  the translations shall be forwarded to the central industrial property officesof the Contracting  States concerned by post within thethree days following the expiry of the period laid down in Rule  6 (3). Rule 8Revision of the translationThe corrected translation provided for in Article 29 (6) shall  not have any legal effect until the fee for its publication has been paid. Rule 9Registering transfers, licences and other rights1.  Rules 20 to 22 of the Implementing  Regulations to the European Patent Convention shall apply mutatis mutandis to entries made in the  Register of Community Patents. 2.  The request provided for in Article 24 (2) must, in the case of subparagraph (a), be made  within two months, or in the case of subparagraph (b), within four months, of receipt of  notification from the European Patent Office that the name of a new proprietor has been entered in  the Register of Community Patents. 3.  Where a Community patent is involved in bankruptcy or like proceedings, an entry to this effect  shall be made in the Register of Community Patents on request of the competent national authority.  The entry shall not incur a fee. 4.  The entry referred to in paragraph 3 shall be deleted at the request of the competent national  authority. The request shall not incur a fee. 5.  Where a European patent application in which the Contracting States are designated is involved  in bankruptcy or like proceedings, paragraphs 3 and 4 shall apply mutatis mutandis but the  reference to the Register of Community Patents shall be understood as being a reference to the  Register of European Patents provided for in the European Patent Convention. Rule 10Licences of right1.  Any person who wishes to use the invention after a statement  provided for in Article 43 (1) has been filed, shall declare his intention to the proprietor of the  patent by registered letter. The declaration shall be deemed to have been made one week after  posting of the registered letter. A copy of this declaration, stating the date upon which the  declaration was posted, shall be sent to the European Patent Office. Failing this, the European  Patent Office shall, in the event of withdrawal of the statement, consider the declaration not to  have been made. 2.  The declaration shall state how the invention is to be used. After the declaration has been  made, the person making it shall be entitled to use the invention in the way he has stated. 3.  The licensee shall be obliged at the end of every quarter of a calendar year to report to the  proprietor of the patent on the use made thereof and to pay the compensation therefor. If this  obligation is not complied with, the proprietor of the patent may lay down a further suitable time  limit for this purpose. If the time limit is not complied with the licence shall expire. 4.  A request for review of the compensation determined by the Revocation Division may be made only  after the expiry of one year from the last determination of compensation. PART IIIIMPLEMENTING REGULATIONS TO PART III OF THE CONVENTIONCHAPTER IRENEWAL FEESRule  11Payment of renewal fees1.  Rule 37 (1) and (2) of the Implementing Regulations to the European  Patent Convention shall apply to the payment of renewal fees for Community patents. 2.  An additional fee shall be deemed to have been paid at the same time as the renewal fee within  the meaning of Article 48 (2) if it is paid within the period laid down in that provision. Rule 12Period for the entry of surrenderThe period referred to in Article 49 (3) shall be three  months from the date on which the proprietor of the patent has proved to the European Patent Office  that he has informed the licensee of his intention to surrender. If, before expiry of the period,  the proprietor of the patent proves to the European Patent Office that the licensee agrees to the  surrender, it may be entered immediately. CHAPTER IILIMITATION PROCEDURERule 13Period for the filing of the request for limitationRule  12 shall apply mutatis mutandis to the filing of the request for limitation of the Community  patent. Rule 14Content of the request for limitationThe request for limitation of a Community patent  shall contain: (a)  the number of the Community patent which it is sought to limit, the name of the proprietor and  the title of the invention; (b)  the amendments sought; (c)  if the proprietor of the patent has appointed a representative, his name and the address of  his place of business in accordance with Rule 26 (2) (c) of the Implementing Regulations to the  European Patent Convention. Rule 15Rejection of the request for limitation as inadmissibleIf the Revocation Division notes  that the request for limitation of a Community patent does not comply with Article 51 (1) and (3)  and Rule 14, it shall communicate this to the proprietor of the patent and shall invite him to  remedy the deficiencies noted within such a period as it may specify. If the request for limitation  is not corrected in good time, the Revocation Division shall reject it as inadmissible. Rule 16Examination of the request for limitation1.  If the request for limitation of the  Community patent is admissible, the proprietor of the patent shall, in any communication pursuant  to Article 52 (2), where appropriate, be invited to file the description, claims and drawings in  amended form. 2.  Where necessary, any communication pursuant to Article 52 (2) shall contain a reasoned  statement. Where appropriate, this statement shall cover all the grounds against the limitation of  the patent. 3.  Before the Revocation Division decides on the limitation of the patent, it shall inform the  proprietor of the extent to which it intends to limit the patent, and shall request him to pay  within three months the fee for printing a new patent specification and to file the translation  prescribed in Article 53 (2) (b) within the same period. If within that period the proprietor has  communicated his disapproval of the patent being limited to this extent, the communication of the  Revocation Division shall be deemed not to have been made, and the limitation proceedings shall be  resumed. 4.  The further period referred to in Article 53 (3) shall be two months. 5.  The decision to limit the patent shall state the text of the patent as limited. Rule 17Resumption of limitation proceedingsWhere limitation proceedings have been stayed because  of revocation proceedings which result in a decision under Article 58 (2) or (3), the Revocation  Division, after the publication of the mention of such decision, shall communicate to the  proprietor of the patent that the proceedings will be resumed after notification of  thiscommunication to the proprietor. Rule 13 (5) of the Implementing Regulations to the European  Patent Convention shall apply mutatis mutandis. Rule 18Different claims, description and drawings in the case oflimitationWhere it is decided  to limit a Community patent in respect of one or some of the Contracting States, the Community  patent may, where appropriate, contain, for that State or States, claims and, if the Revocation  Division considers it necessary, a description and drawings which are different from those for the  other Contracting States. Rule 19Form of the new specification following limitation proceedingsThe President of the  European Patent Office shall prescribe the form of the publication of the new specification of the  Community patent and the data which are to be included. CHAPTER IIIREVOCATION PROCEDURERule 20Content of the application for revocationAn application  for revocation of a Community patent shall contain: (a)  the name and address of the applicant for revocation and the State in which his residence or  principal place of business is located, in accordance with Rule 26 (2) (c) of the Implementing  Regulations to the European Patent Convention; (b)  the number of the patent in respect of which revocation is applied for, the name of the  proprietor and the title of the invention; (c)  a statement of the extent to which revocation is applied for and of the grounds on which the  application is based as well as an indication of the facts, evidence and arguments presented in  support of these grounds; (d)  if the applicant has appointed a representative, his name and the address of his place of  business, in accordance with Rule 26 (2) (c) of the Implementing Regulations to the European Patent  Convention. Rule 21Security for the costs of proceedingsThe security for the costs of the proceedings shall  be deposited in a currency in which fees may be paid. It must be deposited with a financial or  banking establishment includedin the list drawn up by the President of the European Patent Office.  The national law of the Contracting State in which the establishment has its place of business  shall apply to any such security. Rule 22Rejection of the application for revocation as inadmissible1.  The Revocation Division  shall communicate the application for revocation to the proprietor of the patent who may comment on  its admissibility within one month. 2.  If the Revocation Division notes that the application for revocation does not comply with  Article 55 (1) and (4) and Rule 20, as well as Rule 3 of these Implementing Regulations in  conjunction with Rule 1 (1) ofthe Implementing Regulations to the European Patent Convention, it  shall communicate this to the proprietor and to the applicant and shall invite the applicant to  remedy the deficiencies noted within such period as it may specify. If the application for  revocation is not corrected in good time, the Revocation Division shall reject it as inadmissible. 3.  Any decision to reject an application for revocation as inadmissible shall be communicated to  the proprietor of the patent. Rule 23Preparation of the examination of the application forrevocation1.  If the application  for revocation is admissible, the Revocation Division shall invite the proprietor of the patent to  file his observations and to file amendments, where appropriate, to the description, claims and  drawings within a period to be fixed by the Revocation Division. 2.  The observations and any amendments filed by the proprietor of the patent shall be communicated  to the applicant who shall be invited by the Revocation Division, if it considers it expedient, to  reply within a period to be fixed by the Revocation Division. Rule 24Examination of the application for revocation1.  All communications issued pursuant to  Article 57 (2) and all replies thereto shall be communicated to all parties. 2.  In any communication from the Revocation Division to the proprietor of the patent pursuant to  Article 57 (2), he shall, where appropriate, be invited to file the description, claims and  drawings in amended form. 3.  Where necessary, any communication from the Revocation Division to the proprietor of the patent  pursuantto Article 57 (2) shall contain a reasoned statement. Where appropriate, this statement  shall cover all the grounds against the maintenance of the Community patent. 4.  Before the Revocation Division decides on the maintenance of the patent in the amended form, it  shall inform the parties that it intends to maintain the patent as amended and shall invite them to  state their observations within a period of one month if they disapprove of the text in which it is  intended to maintain the patent. 5.  If disapproval of the text communicated by the Revocation Division is expressed, examination of  the revocation may be continued; otherwise, the Revocation Division shall, on expiry of the period  referred to in paragraph 4, request the proprietor of the patent to pay within three months the fee  for the printing of a new specification and to file the translations prescribed in Article 58 (3)  (b) within the same period. 6.  The further period referred to in Article 58 (4) shall be two months. 7.  The decision to maintain the patent as amended shall state which text of the patent forms the  basis for the maintenance thereof. Rule 25Joint processing of applications for revocation1.  The Revocation Division may order that  two or more applications for revocation pending before it and relating tothe same Community patent  be dealt with jointly in order to carry out a joint investigation and take a joint decision. 2.  The Revocation Division may rescind an order given pursuant to paragraph 1. Rule 26Different claims, description and drawings in the case ofrevocationWhere revocation of a  Community patent is pronounced in respect of one or more of the Contracting States, Rule 18 shall  apply mutatis mutandis. Rule 27Form of the new specification following revocationproceedingsRule 19 shall apply to the  new specification of the Community patent referred to in Article 59. Rule 28Other provisions applicable to revocation proceedingsRules 59, 60 and 63 of the  Implementing Regulations to the European Patent Convention shall apply mutatis mutandis to requests  for documents, continuation of revocation proceedings by the European Patent Office of its own  motion and costs in revocation proceedings. PART IVIMPLEMENTING REGULATIONS TO PART V OF THE CONVENTIONRule 29Entries in the Register of  Community Patents1.  Rule 92 (1) (a) to (l), (o), (q) to (u) and (w), (2) and(3) of the  Implementing Regulations to the European Patent Convention shall apply mutatis mutandis to the  Register of Community Patents. 2.  The Register of Community Patents shall also contain the following entries: (a)  date of lapse of the Community patent in the cases provided for in Article 50 (1) (b) and  (c); (b)  date of filing of the statement provided for in Article 43; (c)  date of receipt of a request for limitation of the Community patent; (d)  date and purport of the decision on the request for limitation of the Community patent; (e)  date of receipt of an application for revocation of the Community patent; (f)date and purport of the decision on the application for revocation of the Community patent; (g)particulars of matters referred to in Article 23 (4); (h)a record of the information communicated to the European Patent Office concerning proceedings  under the Protocol on Litigation. Rule 30Additional publications by the European Patent OfficeThe President of the European Patent  Office shall determine in what form the translations filed pursuant to theConvention by the  applicant for or proprietor of a patent and, where appropriate, corrected translations, shall be  published and whether particulars of such translations and corrected translations should be entered  in the Community Patent Bulletin. Rule 31Other common provisionsRules 36 and 106 and the provisions of Part VII ofthe  Implementing Regulations to the European PatentConvention, with the exception of Rules 85 (3), 86,  87, 92 and 96, shall apply mutatis mutandis subject to the following: (a)  Rule 69 shall not apply to decisions on requests for limitation or on applications for  revocation of the Community patent; (b)  the Select Committee of the Administrative Council shall determine the details of the  application of Rule 74 (2) and (3); (c)  the term 'Contracting States' shall be understood as meaning the States parties to this  Convention. PART VIMPLEMENTING REGULATIONS TO PART VIII OF THE CONVENTIONRule 32Option between a Community  patent and a European patent1.  The statement referred to in Article 81 (1) must be filed, and the  fees paid, before or when the applicant approves, in accordance with Rule 51 (4) of the  Implementing Regulations to the European Patent Convention, the text in which the patent is to be  granted. 2.  The prescribed fees referred to in Article 81 (1) shall consist of: (a)  an additional fee in accordance with the Rules relating to Fees; and(b)  if the designation  of more than three Contracting States is to be maintained, the currently prescribed designation fee  for each additional Contracting State over and above the first three.