SONN Patentanwälte – IP Attorneys

Accession of Romania to the EPC per 1.3.2003

On 12 December 2002, the Government of the Republic of Romania (RO) deposited its instrument of accession to the European Patent Convention (EPC) and to the Act revising the EPC of 29 November 2000. The EPC will accordingly enter into force for Romania on 1 March 2003.

The European Patent Organisation will thus comprise the following 27 member states as from 1 March 2003:
Austria, Belgium, Bulgaria, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Liechtenstein, Luxembourg, Monaco, the Netherlands, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey and the United Kingdom.

European patent applications filed on or after 1 March 2003 will include the designation of Romania*. It will not be possible to designate Romania retroactively in applications filed before that date.

To allow the new contracting state to be designated, however, the EPO will accord European patent applications filed in February 2003 the filing date of 1 March 2003 if the applicant expressly requests that filing date when filing the application.

Important for PCT:

Nationals of Romania and persons having their principal place of business or residence in Romania will also be entitled, as from 1 March 2003, to file international applications with the European Patent Office as receiving Office.

If the European patent designation box ("EP") is selected in a PCT request (PCT/RO/101) filed on or after 1 March 2003, that designation will automatically include the new EPC contracting state.

What is the effect of accession of Romania to the EPC on the extension agreement between the EPO and Romania?

The extension agreement between the Republic of Romania and the European Patent Organisation will terminate with the entry into force of the EPC in Romania on 1 March 2003. It will thereafter no longer be possible to extend European patent applications and patents to Romania. It follows that European patent applications filed on or after 1 March 2003 will no longer be deemed to be requests to extend the European patent application or the European patent granted in respect thereof to Romania. The marking of a cross against Romania in Section 34 of EPO Form 1001 for applications filed on or after the above date will not have any legal effect. Romania will be removed from the list of extension states when the form is next reissued.

The extension system will, however, continue to apply to all European and international applications filed prior to 1 March 2003, as well as to all European patents granted in respect of such applications.

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* See Section 32.1 of the Request for Grant form (EPA/EPO/OEB Form 1001 07.02; OJ EPO 2002, 375). Romania will be included in a new version of the form. To obtain a reduction in the examination fee under Rule 6(3) EPC and Article 12(1) RFees, the request for examination may be worded as follows in Romanian:

"Se solicitã examinarea cererii în sensul art. 94." (see Section II, point 5, of the Notes on Form 1001).

As Section 5 (left-hand column) already contains a preprinted written request for examination in the EPO's official languages, the recommended procedure is to enter the written request for examination in Romanian in the right-hand column of Section 5. The request for examination in this language may however also be submitted later at any time before the examination fee is paid (see decision J 21/98 of the Legal Board of Appeal, published in OJ EPO 8-9/2000, 406).