OJ EPO 2013, 150

By decision of 27 June 2012^[ 1 ], the Administrative Council of the European Patent Organisation amended Rule 53 EPC so as to introduce a legal sanction in case of non-compliance with an invitation to file the translation of a previous application whose priority is claimed duly issued by the EPO in compliance with the requirements laid down in Rule 53(3) EPC. Failure to comply with this invitation will result in the loss of the right of the relevant priority. The introduction of a specific sanction is aimed at increasing legal certainty and transparency but also streamlining the proceedings before the EPO.

This amendment will enter into force on 1 April 2013. The present notice gives information about the new procedure.

Issuance of a Rule 53(3) EPC invitation

Pursuant to Rule 53(3) EPC an invitation to file a translation of the previous application whose priority is claimed can only be issued where that application is not in an official language of the European Patent Office and the validity of the priority claim is relevant to the determination of the patentability of the invention concerned. The translation is to be filed within a time limit specified by the European Patent Office.

Depending on the type of applications concerned and the stage of the proceedings during which examination of the validity of the priority appears necessary in view of relevant intermediate prior art, the invitation to provide the EPO with the translation of the priority document may be issued as follows:

1. For European patent applications

1.1 Where the validity of the priority is considered to be of relevance to the determination of the patentability of the invention concerned at the stage of the completion of the extended European search report, an invitation under Rule 53(3) EPC is notified by registered letter. In this case the period for filing the requested translation is aligned to the period for filing the request for examination pursuant to Rule 70(1) EPC.

If the request for examination has however been filed before the European search report has been transmitted to the applicant, the period for filing the translation is aligned to the time limit for indicating whether it is wished to proceed further with the application pursuant to Rule 70(2) EPC.

1.2 Where the validity of the priority claim assumes importance during the examination proceedings, for example as a result of the search for any conflicting applications under Article 54(3) EPC (topping-up search) or relevant prior art filed by third parties according to Article 115 EPC, the invitation is issued by the Examining Division.

2. For Euro-PCT applications

In the case of Euro-PCT applications for which the EPO has drawn up the international search report together with the written opinion or has drawn up a supplementary international search report, the invitation under Rule 53(3) EPC is sent by the Examining Division.

3. For European patents

In the exceptional cases where examination of the validity of the priority claim assumes importance during opposition proceedings only, e.g. because of relevant prior art brought forward by the opponent, the invitation to file the translation of the priority document is issued by the Opposition Division.

Form of the reply

A valid reply to an invitation under Rule 53(3) EPC consists of either the requested translation or a declaration that the European patent application is a complete translation of the previous application.

In case of multiple priorities the applicant or proprietor is only required to file the translation of the priority claim(s) indicated in the invitation.

Sanction and legal remedies applicable

If the applicant or the patent proprietor fails to respond to an invitation to file the translation under Rule 53(3) EPC within the period set by the EPO, the right of priority for the European patent application or for the European patent with respect to the priority claim for which the requested translation has not been duly filed will be lost (Rule 53(3), penultimate sentence, EPC).

The loss of rights which would ensue from the failure to file the translation can be remedied during examination proceedings by filing a request for further processing in accordance with Article 121 EPC. During opposition proceedings, the ensuing loss of rights can only be remedied by filing a request for re-establishment of rights pursuant to Article 122 EPC. In both cases, the party concerned may file a request for a decision under Rule 112(2) EPC.

Transitional provisions

Rule 53 EPC as amended applies to European and Euro-PCT applications as well as to European patents in respect of which an invitation under Rule 53(3) EPC has not yet been issued by the date of entry into force of the amended provision (1 April 2013).