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Updates from the European Patent Office

Posted on 5 February 2024

Potential for European patent protection in Georgia

On 15 January 2024, a validation agreement between the European Patent Office (EPO) and Georgia entered into force. This means that applicants may now validate their granted European patents in Georgia, increasing the number of countries in which a granted European patent may be validated to 45 (comprising 39 European Patent Convention member states, 5 validation states and 1 extension state). The increase in the number of states in which protection may be sought will no doubt be attractive to applicants. 

It will be possible to validate both direct European and Euro-PCT applications that are filed after 15 January 2024 in Georgia. To do so, it will be necessary to designate Georgia as a validation state and pay the appropriate fee during prosecution of the European application. Failure to designate Georgia as a validation state will mean that subsequent validation of the European patent in Georgia will not be possible. A full translation of the specification into Georgian will need to be provided within three months of grant.

Whether or not an applicant chooses to validate their European patent in Georgia will be a commercial decision.

Amendments to the Rules of Procedure of the Boards of Appeal

On 1 January 2024, amendments to the Rules of Procedure of the Boards of Appeal (RPBA) entered into effect. The amendments are intended to improve the timeliness associated with appeal proceedings without adversely impacting parties' rights, helping the Boards of Appeal meet their objective of resolving 90% of cases within 24 months by the end of 2025.

Article 13(2) RPBA previously defined the summons to oral proceedings as the point in proceedings after which amendments to the appeal case would only be taken into account under exceptional circumstances. The amendment to the RPBA changes this trigger point from the summons to a communication under Article 15(1) RPBA i.e., the Board's preliminary opinion.  This will be welcome news to many as the Article 15(1) RPBA communication is often issued later in proceedings than the summons, increasing the period in which amendments may be made to the case.

The EPO has highlighted as being of particular importance the amendment to Article 15(1) RPBA, which, when there is more than one party, allows the Boards of Appeal to summon the parties to oral proceedings no earlier than one month after the respondent's reply to the statement of grounds of appeal. This period has been reduced from two months, with the EPO anticipating that this change will be beneficial to parties, allowing them and their representatives to plan for oral proceedings earlier. However, a two-month reduction does not seem substantial in relation to the years that an appeal can often take to be concluded. In this respect, we are interested to see what impact the reduction will have in practice.

Interestingly, a proposed amendment to Article 12(1)(c) RPBA to reduce the time for a respondent to respond to the grounds of appeal from four months to two months was not accepted at this time due, seemingly, to protests from users of the EPO's Appeal procedures.  However, the EPO plans to reconsider this proposed amendment when the effectiveness of the above-mentioned amendments has been considered. 

Amendments to the Implementing Regulations and the Rules relating to Fees

The EPO has also recently announced a number of changes relating to payment of Fees, set to come into effect on 1 April 2024

The decision sees increases to a number of official EPO fees, including the search fee, designation fee and examination fee. Increases to fees may mean that some applicants consider paying them early, before 1 April 2024.

Along with these increases, a much-welcomed amendment will see 'microenterprises', 'natural persons' and 'non-profit organisations, universities or public research organisations' entitled to a 30% reduction to the filing fee, search fee, examination fee, designation fee, fee for grant and the renewal fees in respect of either a European patent application or an International (PCT) application. However, the reduction will not be available where that person has filed five or more European patent applications or Euro-PCT applications within a period of five years preceding the date of filing of the European patent application or the date of entry into the European regional phase.

A 'microenterprise' employs fewer than 10 persons and has an annual turnover and/or annual balance sheet total not exceeding EUR 2 million.

If you would like further information about any of the changes discussed above, please get in touch.

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