Republic of Moldova invited to accede to European Patent Convention

Cristina Georgescu
Cristina Georgescu

On 13 December 2022, the Administrative Council of the European Patent Organisation (EPO) decided to extend an invitation to accede to the European Patent Convention (EPC) to the Republic of Moldova. Moldova is expected to become the 40th contracting state to the EPC, according to the epo.org, the official website of the European Patent Office (EPO).

European patents are granted by the EPO under the legal provisions of the EPC.

Before acceding to the EPC, the Republic of Moldova will need to enact national legislation to facilitate its implementation and application.

The EPO applies a centralised procedure to examining European patent applications for the Organisation’s contracting states, one extension state (Bosnia and Herzegovina) and four validation states (Cambodia, Republic of Moldova, Morocco and Tunisia), according to epo.org.

Contracting states are countries that have ratified the European Patent Convention and are thus members of the European Patent Organisation.

The current contracting states are: Albania, Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Malta, Monaco, Netherlands, Republic of North Macedonia, Montenegro, Norway, Poland, Portugal, Romania, Serbia, San Marino, Slovak Republic, Slovenia Spain Sweden Switzerland Turkey, United Kingdom, according to epo.org.

According to the Guidelines of Examination in EPO (GL), Part A III 12.1, at the applicant’s request and on payment of the prescribed fee, European patent applications (direct or Euro-PCT) and thus patents can be extended to European states for which an extension agreement with the EPO has become effective (extension states). The same applies to requests for validation in European or non-European states for which a validation agreement has entered into force (validation states).

After the European patent application has been examined and the European patent has been granted, the proprietor can validate it in the “contracting states”, “extension states” and “validation states” in which he/she wants to obtain a patent.

The validation of the European patents is the process of converting a single granted European patent into national patents in one or more of the 44 “contracting states”, “extension states” and “validation states”.

After grant of the patent, it splits up into separate national patents in the states choosen by the proprietor.

The European patents are enforced at a national level, i.e. on a per-country basis.

According to Art. 2 EPC, the European patent shall, in each of the Contracting States for which it is granted, have the effect of and be subject to the same conditions as a national patent granted by that State, unless this EPC provides otherwise.

A “validation state” does not benefit from all the rights conferred by the EPC to the “contracting states”.

For example, a request for re-establishment of rights according to Art. 122 and Rule 136 EPC is not possible in respect of payment of the missed validation fee.

A designation fee is due for the “contracting states”. A “validation fee” is due for each of the desired “validation states” in order to be able to validate the granted European patent in the corresponding state.

As mentioned above, Moldova is currently a “validation state”.

When it becomes a “contracting state”, Moldova will benefit from further the following Articles and Rules of the EPC:

Art. 14(4): Languages of the European Patent Office, European patent applications and other documents

Natural or legal persons having their residence or principal place of business within a Contracting State (i.e. Moldova) having a language other than English, French or German as an official language, and nationals of that State who are resident abroad, may file documents which have to be filed within a time limit in an official language of that State, (i.e. in Romanian language). They shall, however, file a translation in an official language of the EPO.

Art. 59: Multiple applicants

A European patent application may be filed either by joint applicants or by two or more applicants designating different Contracting States (Moldova).

Art. 64: Rights conferred by a European patent

(1) A European patent shall confer on its proprietor from the date on which the mention of its grant is published in the European Patent Bulletin, in each Contracting State in respect of which it is granted, the same rights as would be conferred by a national patent granted in that State (Moldova).

Art. 66: Equivalence of European filing with national filing

A European patent application which has been accorded a date of filing shall, in the designated Contracting States (Moldova), be equivalent to a regular national filing, where appropriate with the priority claimed for the European patent application.

Art. 67: Rights conferred by a European patent application after publication

(1) A European patent application shall, from the date of its publication, provisionally confer upon the applicant the protection provided for by Article 64, in the Contracting States (Moldova) designated in the application.

Art. 70: Authentic text of a European patent application or European patent

(1) The text of a European patent application or a European patent in the language of the proceedings shall be the authentic text in any proceedings before the European Patent Office and in any Contracting State (e.g. Moldova).

(2) If, however, the European patent application has been filed in a language which is not an official language of the European Patent Office (namely Romanian language), that text shall be the application as filed within the meaning of this Convention.

Art. 71: Transfer and constitution of rights

A European patent application may be transferred or give rise to rights for one or more of the designated Contracting States (e.g. Moldova).

Art. 73: Contractual licensing

A European patent application may be licensed in whole or in part for the whole or part of the territories of the designated Contracting States.

Art. 75: Filing of a European patent application

(1) A European patent application may be filed:

(a) with the European Patent Office, or

(b) if the law of a Contracting State (e.g. Moldova) so permits, …, with the central industrial property office or other competent authority of that State (e.g. AGEPI Moldova). Any application filed in this way shall have the same effect as if it had been filed on the same date with the European Patent Office.

Rule 35: General provisions

(3) If the European patent application is filed with an authority referred to in Article 75, paragraph 1(b) (e.g. AGEPI Moldova), such authority shall without delay inform the European Patent Office of the receipt of the application, and, in particular, of the nature and date of receipt of the documents, the application number and any priority date claimed.

(4) Upon receipt of a European patent application forwarded by the central industrial property office of a Contracting State (e.g. AGEPI Moldova), the European Patent Office shall inform the applicant accordingly, indicating the date of its receipt.

Art. 76: European divisional applications

(1) A European divisional application shall be filed directly with the European Patent Office in accordance with the Implementing Regulations. (…)

(2) All the Contracting States (e.g. Moldova) designated in the earlier application at the time of filing of a European divisional application shall be deemed to be designated in the divisional application.

Art. 99 Opposition

(1) Within nine months of the publication of the mention of the grant of the European patent in the European Patent Bulletin, any person may give notice to the European Patent Office of opposition to that patent, in accordance with the Implementing Regulations. Notice of opposition shall not be deemed to have been filed until the opposition fee has been paid.

(2) The opposition shall apply to the European patent in all the Contracting States (e.g. Moldova) in which that patent has effect.

(3) Opponents shall be parties to the opposition proceedings as well as the proprietor of the patent.

(4) Where a person provides evidence that in a Contracting State (e.g. Moldova), following a final decision, he has been entered in the patent register of such State (e.g. Moldova) instead of the previous proprietor, such person shall, at his request, replace the previous proprietor in respect of such State (e.g. Moldova). Notwithstanding Article 118, the previous proprietor and the person making the request shall not be regarded as joint proprietors unless both so request.

Art. 105b: Limitation or revocation of the European patent

(2) If the European Patent Office considers that the request for limitation or revocation of the European patent meets these requirements (…), it shall decide to limit or revoke the European patent in accordance with the Implementing Regulations. Otherwise, it shall reject the request.

(3) The decision to limit or revoke the European patent shall apply to the European patent in all the Contracting States (e.g. Moldova) in respect of which it has been granted. It shall take effect on the date on which the mention of the decision is published in the European Patent Bulletin.

Art. 133: General principles of representation

2) Natural or legal persons not having their residence or principal place of business in a Contracting State (e.g. Moldova) shall be represented by a professional representative and act through him in all proceedings established by this Convention, other than in filing a European patent application; the Implementing Regulations may permit other exceptions.

(3) Natural or legal persons having their residence or principal place of business in a Contracting State (e.g. Moldova) may be represented in proceedings established by this Convention by an employee, who need not be a professional representative but who shall be authorised in accordance with the Implementing Regulations. The Implementing Regulations may provide whether and under what conditions an employee of a legal person may also represent other legal persons which have their principal place of business in a Contracting State (e.g. Moldova) and which have economic connections with the first legal person.

Art. 134: Representation before the European Patent Office

(1) Representation of natural or legal persons in proceedings established by this Convention may only be undertaken by professional representatives whose names appear on a list maintained for this purpose by the European Patent Office.

(2) Any natural person who

(a) is a national of a Contracting State (e.g. Moldova),

(b) has his place of business or employment in a Contracting State (e.g. Moldova) and

(c) has passed the European qualifying examination

may be entered on the list of professional representatives.

(3) During a period of one year from the date on which the accession of a State (e.g. Moldova) to this Convention takes effect, entry on that list may also be requested by any natural person who:

(a) is a national of a Contracting State (e.g. Moldova),

(b) has his place of business or employment in the State (e.g. Moldova) having acceded to the Convention and

(c) is entitled to represent natural or legal persons in patent matters before the central industrial property office of that State (e.g. Moldova). Where such entitlement is not conditional upon the requirement of special professional qualifications, the person shall have regularly so acted in that State (e.g. Moldova) for at least five years.

(4) Entry shall be effected upon request, accompanied by certificates indicating that the conditions laid down in paragraph 2 or 3 are fulfilled.

(5) Persons whose names appear on the list of professional representatives shall be entitled to act in all proceedings established by this Convention.

(6) For the purpose of acting as a professional representative, any person whose name appears on the list of professional representatives shall be entitled to establish a place of business in any Contracting State (e.g. Moldova) in which proceedings established by this Convention may be conducted, having regard to the Protocol on Centralisation annexed to this Convention. The authorities of such State (e.g. Moldova) may remove that entitlement in individual cases only in application of legal provisions adopted for the purpose of protecting public security and law and order. Before such action is taken, the President of the European Patent Office shall be consulted.

(7) The President of the European Patent Office may grant exemption from:

(a) the requirement of paragraphs 2(a) or 3(a) in special circumstances;

(b) the requirement of paragraph 3(c), second sentence, if the applicant furnishes proof that he has acquired the requisite qualification in another way.

(8) Representation in proceedings established by this Convention may also be undertaken, in the same way as by a professional representative, by any legal practitioner qualified in a Contracting State (e.g. Moldova) and having his place of business in that State (e.g. Moldova), to the extent that he is entitled in that State (e.g. Moldova) to act as a professional representative in patent matters. Paragraph 6 shall apply mutatis mutandis.

Art. 135: Request for conversion

(1) The central industrial property office of a designated Contracting State (e.g. Moldova) shall, at the request of the applicant for or proprietor of a European patent, apply the procedure for the grant of a national patent in the following circumstances:

(a) where the European patent application is deemed to be withdrawn under Article 77, paragraph 3;

(b) in such other cases as are provided for by the national law, in which the European patent application is refused or withdrawn or deemed to be withdrawn, or the European patent is revoked under this Convention.

Romanian patent attorney Cristina Georgescu

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