4.11

In response to a communication under Rule 71(3), applicants may expressly indicate that they wish to waive their right to receive a further Rule 71(3) communication when filing amendments or corrections to the text proposed by the examining division which do not require resumption of the substantive examination proceedings. Provided that the necessary conditions indicated below are fulfilled and the examining division has no objections to the amendments or corrections, the examining division is deemed to have consented to the waiver (for detailed information see the Notice from the EPO dated 8 June 2015, OJ EPO 2015, A52).

A waiver expressed in response to a Rule 71(3) communication is only effective in respect of the following Rule 71(3) communication.

In order for the right to receive a further communication under Rule 71(3) to be effectively waived, the following conditions must be fulfilled within the four-month period under Rule 71(3):

– 
the waiver must be expressly indicated 
– 
a translation of the claims (including the requested amendments or corrections, if any) in the two official languages other than the language of the proceedings must be filed 
– 
the requisite fees for grant and publication must be paid 
– 
the claims fees in respect of the sixteenth and each subsequent claim must be paid, unless they have already been paid under Rule 45 or Rule 162
– 
the amendments or corrections must be identified and their basis in the application as filed must be indicated (Rule 137(4)). The relevant pages of the Druckexemplar containing the amendments or corrections must be filed.

If all these formal requirements are fulfilled and the examining division has no objections to the amendments or corrections requested by the applicant, the examining division is deemed to have consented to the waiver. The waiver can only be deemed to be consented to if the amendments or corrections requested do not require resumption of the substantive examination proceedings, for example spelling mistakes or incorrect reference to the drawings. In this case no further communication under Rule 71(3) will be sent to the applicant. Instead, "Information under Rule 71(3) EPC" (Form 2004W) will be published in the European Patent Register, with the aim of informing the applicant and the public of the text in which the examining division intends to grant the patent and the related bibliographic data, as approved by the applicant. The decision to grant the European patent is then issued, provided that renewal fees and any additional fees already due have been paid. No further amendments or corrections of any kind may be made by the examining division on its own initiative, even if it can reasonably expect the applicant to accept them.

If consent cannot be given to the waiver because the formal requirements (as to the fees to be paid or the translations of the claims to be filed) are not fulfilled, a further Rule 71(3) communication will be sent to the applicant as provided for in Rule 71(6) (see C‑V, 4.6). The same applies if additional changes are considered necessary by the examining division. When it is not possible to issue a further Rule 71(3) communication, examination will be resumed by sending a communication under Art. 94(3) and Rule 71(1) and (2) in line with C‑V, 4.7 and subsections. The same is also true where the Rule 71(3) communication was based on an auxiliary request and the applicant has replied by requesting that the grant be based on a higher-ranking request.

Where a further communication under Rule 71(3) is subsequently issued, the applicant is required to express approval of the text of the patent as possibly amended or corrected by the examining division (Rule 71a(1)). Reference is made to C‑V, 6.2.

With regard to the payment of fees, see the procedure for crediting or refunding of amounts of fees already paid in C‑V, 4.2, and A‑X, 10.2.7, and A‑X, 11.

If fees for an application are paid under the automatic debiting procedure, where a waiver has been expressed in response to a Rule 71(3) communication, the fee for grant, including the fee for publication/printing (Art. 2(2) RFees), and any additional claims fees due under Rule 71(4) must be paid separately by another means of payment allowed under RFees (see point 12 AAD and Re point 12 AAD in Annex A.2 to the ADA). These fees will not be debited automatically.

After grant of a patent, errors remaining in the text of the patent as approved cannot be corrected under Rule 140 (see G 1/10, OJ EPO 2013, 194, and H‑VI). For correction of errors in publication and formatting/editing errors, see H‑VI, 4.

Quick Navigation