Patent maintained as amended

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Joined: Fri Sep 11, 2020 1:58 pm

Patent maintained as amended

Post by Filippo79 » Fri Sep 11, 2020 2:06 pm

I would like to know if, after a patent has been maintained as amended during an opposition procedure, the applicant can validate it into contracting states which have not been chosen before within the three months after the mention of the grant has been published

EPO / Patent Information
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Joined: Wed Nov 12, 2014 3:36 pm

Re: Patent maintained as amended

Post by EPO / Patent Information » Thu Sep 24, 2020 8:59 am

Under Article 65(1) of the European Patent Convention, any contracting state may, if the European patent as granted, amended or limited by the European Patent Office is not drawn up in one of its official languages, prescribe that the proprietor of the patent supply to its central industrial property office a translation of the patent as granted, amended or limited in one of that state's official languages at his option or, where that state has prescribed the use of one specific official language, in that language.

Hence, a translation must be provided of the patent as granted, amended in opposition (Rule 82(2) EPC) or limited in limitation proceedings (Rule 95(3) EPC). All contracting states have a period of three months, except Iceland – further details HERE.

It is our understanding that the EPC would not allow that a patent maintained in amended form in opposition proceedings is validated thereafter in states in which it had not been validated initially, i.e. after grant by the EPO. This would practically also not be possible, as the three months period for an initial validation after grant will as a rule have expired when the patent is maintained in amended form by the EPO’s opposition division. Therefore, pursuant to Article 65(3) EPC, the European patent will be deemed to be void ab initio in the state where the provisions adopted in accordance with Article 65(1) and (2) EPC by the contracting states have not been observed. In other words, if you do not validate correctly in the concerned state after the grant of the patent, the European patent will be deemed to be void in that state so that it cannot be revived subsequently.

Please do not hesitate to contact in case of any further questions.
Kind regards,

The Patent Information User Support Team

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