Legal basis for the IT Roadmap

On 1 September 2012, the President's decision concerning the pilot project to introduce new technical means of communication in EPO proceedings will enter into force. This decision will establish the legal framework for progressive implementation of the IT Roadmap, the EPO's programme for substantially improving its current IT systems.

Improving and enhancing IT systems

To keep abreast of rising demand from patent system users and society in general, the EPO has initiated a major programme to improve IT support for the filing and processing of patent applications. This programme has been translated into an "IT Roadmap". The aim is to provide better tools to support applicants and examiners. The EPO's ultimate objective is full electronic processing of European patent applications from filing to opposition and appeal.

The EPO plans to establish a comprehensive, secure and innovative case management system that will digitally process patent applications at all stages of the grant process. The new case management system will replace almost all the EPO's existing automated processes. It will support the filing of patent applications at the EPO (currently some 250 000 annually) as well as the electronic handling of other transactions, which at present amount to around 2.5 million transactions per year.

The new system is intended to improve the electronic processing of patent applications by allowing enhanced electronic collaboration with users. To that end, it is intended that patent applications and subsequent documents should as far as possible be filed in the form of structured data, i.e. in a format such as XML which would directly allow them to be processed electronically.

Pilot project to introduce new technical means of communication

Implementation of such a major change must not compromise the continuity of patent examination and other EPO activities, and users have a legitimate expectation that any new systems are tested and fully functional before they are made generally available.

The EPO has therefore decided to introduce the new tools progressively and in the form of different pilot projects. Selected user groups will be invited to participate in the pilot phase for various new or revamped technical features, which will be made successively available to the test users as soon as the technical preparations and internal tests have been successfully completed. This approach should limit the risk of technical faults and malfunctions and at the same time ensure that testing is meaningful.

Notwithstanding the test character of the pilot projects, use of these technical features in proceedings before the EPO will accord full legal effect, i.e. it will be binding and legally valid. However, the test character may require a degree of flexibility from the Office and from the contractors developing the technical solutions. Thus the Office reserves the right to make modifications to technical features already in use. Also, there should be maximum transparency for participating users and third parties alike, in that the relevant metadata linked to these new technical features is collected for evidentiary purposes. Last but not least, test users have to be protected against adverse consequences resulting from technical faults and malfunctions of these features, taking into account the legitimate interests of third parties and the public as a whole.

These fundamental principles have been incorporated in the Decision of the President dated 4 July 2012 concerning the pilot project to introduce new technical means of communication in EPO proceedings (OJ EPO 2015, A28), which enters into force on 1 September 2012 and provides the legal basis for this pilot project implementing the IT Roadmap.

Details of the Decision of the President dated 4 July 2012

The first part of the decision reflects the fundamental principles of limited participation (Article 2), flexibility (Article 1(2), but see also Article 12 allowing for the issuing of supplementary provisions and rules diverging from the decision), transparency (Article 4) and the protection of test users. Article 5, which addresses the latter issue, is based on the principle that any participant who is affected by such technical faults should not incur any loss of rights provided he actively informs the EPO of any such fault and, where necessary, repeats the procedural act. Where the filing of a patent application is concerned, the applicant is in such cases required to use another means of filing in order to retain the date of filing. Thus the EPO will make good the consequences of technical faults, but only where the participants concerned help to detect the fault and provide the necessary information in due time.

The second part of the decision lists the chief technical features currently planned and contains related rules. These features will be made available progressively; potential test users and the public will be informed of their implementation and the specifications and conditions for participation in the pilot phase, if any, through the EPO's website. The only exception to the above is Article 9: electronic notification will be operational once the decision enters into force. Currently, the following tools are envisaged:

  • a new filing tool allowing for the filing of applications and subsequent documents in the form of structured data in order to reflect the shift to the filing of documents in that form (Article 6). This will be a tool different from, and initially additional to, the current means of electronic online filing on the basis of the Decision of the President dated 26 February 2009 concerning the electronic filing of documents (OJ EPO 2009, 182);
  • a tool for the electronic filing of international (PCT) applications and other documents in the form of structured data (Article 7). This will be subject to the applicable PCT rules, notably Rule 89bis;
  • electronic notification (Article 9). This provision supersedes the Decision of the President dated 13 December 2011 concerning notification by technical means of communication in selected EPO proceedings (cf. Article 14 of the present decision). The ten-day rule known from notification by post (Rule 126(2) EPC) applies without exception in the case of electronic notification as well (Article 9(4));
  • a new system for the creation, maintenance and processing of files (Article 10). Such new systems may be additional to, or may fully or partly replace, the PHOENIX electronic file system. Hitherto, the use of the latter has been mandatory, cf. the Decision of the President dated 12 July 2007 concerning the use of the PHOENIX electronic file system (Special edition No. 3, OJ EPO 2007, J.1). Therefore, an opening clause allowing for the use of other systems due to be developed was necessary;
  • a tool allowing users to determine the number of pages (Article 11). Filing applications and other documents in the form of structured data will not result in the submission of documents structured on a page basis. However, since the EPC relies on pages as a unit for calculating, inter alia, page fees, the filing of data in a differently structured format necessarily requires a means of calculating the equivalent of a page. Calculation of this number will be based on the formal provisions laid down in the Implementing Regulations, notably Rules 46, 49 and 50 EPC.

Within the boundaries of the decision's scope of application (Article 1), further technical features may be set up and approved on the basis of the authorisation in Article 12.

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