IMPORTANT CHANGES IN EUROPEAN AND GERMAN PATENT LAW

February 2005

As of January 1, 2005, some important changes have become effective in the European Patent Convention (EPC) and in German Patent Law, and some further changes will take place in the course of 2005.

The most important amendments are outlined in the following:

1) New EP filing fees: An incentive for online filing of European patent applications

As of January 1, 2005, the fee for the paper filing of a European patent application was increased from € 125.00 to € 160.00. The fee for online filing, however, has remained constant and amounts to € 90.00. This difference of € 70.00 is meant to form an incentive for applicants in favor of online filing, which renders handling of the application easier for the European Patent Office (EPO).

Compared with other fees, in particular the search fee of € 690.00 and the examination fee of € 1,430.00, the filing fee represents only a small part of the overall sum of the official fees which become due in the course of an EP application.

Nevertheless, BETTEN & RESCH has made all necessary preparations for the online filing of European patent applications as well as the online entering of the regional European phase of PCT applications (for which the same filing fee is due), and since January 1, 2005, we have filed an increasing number of applications online. The reduction of € 70.00 is, of course, completely to the benefit of our clients.

Please do not hesitate to contact us if you wish to receive further information on this topic.

2) Future changes in further EP regulations and fees

The EPO has decided to change certain other official fees in the course of 2005: As of April 1, 2005, two official fees will be increased which fortunately only become due in very exceptional cases: The fee for further processing will rise from € 75.00 to € 200.00, and the fee for re-establishment of rights will be increased from € 75.00 to € 350.00.

Furthermore, as of July 1, 2005, important changes to the European Patent Convention will take place implying alterations both in EP prosecution proceedings and in corresponding fees:

In the first place, each European search report will be established as a so-called extended European search report. This means that the search report will be accompanied by an opinion on whether or not the application and the invention to which it relates meet the requirements of the EPC. In other words, the European search report will be accompanied by a kind of brief examination report. Correspondingly, the fee for a European search or a supplementary European search (in case of a PCT/EP application) will be increased from € 690.00 to € 960.00. On the other hand the European examination fee will be generally reduced from € 1,430.00 to € 1,280.00. Only in case of a PCT/EP application for which no supplementary European search report is drawn up (for example because the EPO itself established the international search report in its capacity as International Searching Authority), the examination fee will remain € 1,430.00.

In summary, the EPO will shift part of its examination work into the earlier search phase, establish an extended European search report, and correspondingly increase the search fee and reduce the examination fee.

The above new regulations will apply to all European patent applications and international applications entering the European phase filed on or after July 1, 2005.

3) New regulations in Rule 51(4) EPC

At the end of successful examination proceedings and before deciding to grant the EP patent, the EPO informs the applicant of the text in which it intends to grant it, and invites him to pay the fees for grant and printing and to file a translation of the claims in the two official languages of the EPO that are not the language of the proceedings within a certain period to be specified, usually four months. Hitherto this period has been extendable, giving the applicant enough time to verify amendments made by the EPO in the application documents or to envisage filing of a divisional application.

As of April 1, 2005, this period will no longer be extendable. If the corresponding deadline is missed, the European patent application will be deemed to be withdrawn. In this case further processing may be requested.

4) New EPC member states

In the course of 2004 three new member states joined the European Patent Organization, namely Poland (as of March 1, 2004), Iceland (as of November 1, 2004) and Lithuania (as of December 1, 2004).

European patents can therefore now cover the following 30 member states: Austria, Belgium, Bulgaria, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Liechtenstein, Lithuania, Luxembourg, Monaco, the Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey and the United Kingdom.

All 30 member states can be designated upon payment of only 7 designation fees during the examining proceedings.

5) Further processing now also available in proceedings before the German Patent and Trademark Office

The possibility to request further processing after an application is refused due to failure to reply within a time limit set by the German Patent and Trademark Office (GPTO) was introduced into German law effective as of January 1, 2005. This applies in particular to patent, utility model, trademark and design application proceedings.

In all cases the corresponding request has to be filed within 1 month of the date on which the decision of rejection was notified. An official fee of € 100.00 has to be paid, and the omitted act must be completed within the same time limit.

Please do not hesitate to contact us if you wish to receive further information on any of these topics, or if we can render you any other service.

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