The new Visser is out

The 24th edition of the book The Annotated European Patent Convention by Derk Visser has been published on 6 December 2016. The book is updated till 15 November 2016.

A few important amendments in the book are:

  • The changes in the latest edition of the Guidelines for Examination in the EPO, valid as from 1 November 2016, have been included in the 24th edition. The changes relate both to substantive and procedural issues.
  • The Enlarged Board of Appeal has issued decision G1/14 and a new referral G1/16 has been made to the Enlarged Board of Appeal. Decision G1/14 relates to the way the EPO notifies decisions to parties, in particular what delivery providers the EPO can use to dispatch the communications to parties. The question referred in G1/16 is about undisclosed disclaimers. The referring board of appeal had found an apparent incompatibility in the application of the disclosure test to disclaimers in the earlier decisions G1/03 and G2/10. Since the allowability of an undisclosed disclaimer hinges on the disclosure test, the decision of the Enlarged Board of Appeal will affect most pending cases with undisclosed disclaimers.
  • The PACE program and the acceleration of procedure have been changed.  As from now the search of a patent application will always be accelerated. However, the examination will be accelerated only on request. Such a PACE request must be filed online on a special form; no other ways of filing the request are accepted. The PACE programme is not applicable in opposition proceedings.
  • The EPO has defined a new procedure for handling of enquiries about an EPO file. In special cases when a party to proceedings makes an enquiry about the status of a file, the enquiry will accelerate the procedure.
  • The refund system of the examination fee has been simplified and may more applicant friendly. If a patent application is (deemed) withdrawn or refused before the examination has begun, the entire examination fee will be refunded. A 50% refund will be given if the application is withdrawn before expiry of the period for responding to the first substantive communication of the examining division. The EPO has added quite a few exceptions to the 50% refund case.

You can order your print copy of the book by clicking the following link or view the full online version and related smart charts on Kluwer IPLaw.com.

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One comment

  1. Dear Mr Visser.
    I am a bit confues as for a comment under the PCT chapter 8.4 Withdrawals on page 872 of the 24th edition.
    In paricular it refers to the withdrawal of the of the Designation of the US and the signature of the applicant. Is it not an old law? In view of the America Invents Acts it does not seem that t is any longer needed. I was not able to find any legal basis for the applicant signature in the new PCT rules. Can you please clarify.

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