By decision of 26 October 2010 1 , the Administrative Council of the European Patent Organisation amended Rule 71(3) to (11) EPC as to the procedure to be followed after the Examining Division has informed the applicant of the text in which it intends to grant the European patent (communication pursuant to Rule 71(3) EPC), and added a new Rule 71a EPC as to the conclusion of the grant procedure.
These amendments will enter into force on 1 April 2012. The present notice gives information about these amendments. The same information will be found in the revised Guidelines for Examination in the EPO.
Pursuant to Rule 71(3) EPC, once the Examining Division has decided that a patent can be granted, it must inform the applicant of the text on the basis of which it intends to do so. This text may include amendments and corrections made by the Examining Division on its own initiative which it can reasonably expect the applicant to accept. The text is communicated to the applicant by despatching a communication under Rule 71(3) EPC, in which the applicant is furthermore invited to pay the fee for grant and publishing and to file a translation of the claims in the two official languages of the EPO other than the language of the proceedings within a period of four months, which is non-extendable 2 .
If the text of the European patent application serving as the basis for grant contains more than fifteen claims, under Rule 71(4) EPC the applicant is further requested to pay, within the same period, claims fees in respect of each claim over and above that number, unless he has already done so under Rule 45 or Rule 162 EPC 3 .
1. The applicant approves the text intended for grant
If the applicant pays the fees for grant and publishing and any claims fees due under Rule 71(4) EPC and files the translations of the claims within the specified period (and files or requests no corrections or amendments to the text proposed for grant in the Rule 71(3) EPC communication), pursuant to Rule 71(5) EPC he is deemed to have approved the text intended for grant 4 .
Where the communication under Rule 71(3) EPC is based on an auxiliary request, it is the number of claims in that auxiliary request which determines the claims fees which are due in response to this communication. However, if the applicant then replies by requesting a grant based on a higher request, no claims fees need to be paid in response to that Rule 71(3) EPC communication 5 (see below under point 3).
Subsequent to the applicant's approval in response to the Rule 71(3) EPC communication, the Examining Division may resume the examination procedure at any time up to the moment the decision to grant is handed over to the EPO's internal postal service for transmittal to the applicant (see G 12/91, OJ EPO 1994, 285). This will seldom occur, but may be necessary if e.g. the Examining Division becomes aware of very relevant prior art following observations by third parties under Article 115 EPC 6 .
2. The applicant disapproves of the text proposed for grant
The applicant may reply to the communication under Rule 71(3) EPC by simply disapproving of the text proposed therein and not paying any fees or filing the translations. In such cases, if the following criteria are fulfilled, the application will be refused under Article 97(2) EPC for failure to comply with Article 113(2) EPC, because there is no text agreed to by the applicant:
(i) the Examining Division did not propose any amendments or corrections to the application in the communication under Rule 71(3) EPC,
(ii) the Rule 71(3) EPC communication was not based on an auxiliary request, and
(iii) the applicant filed no amendments or corrections with his disapproval.
If any of these criteria are not met, either examination is re-opened or, if the applicant's submissions result in an allowable text, a second Rule 71(3) EPC communication is sent 7 .
3. The applicant files amendments or corrections in reply to a Rule 71(3) EPC communication, or files arguments why he disagrees with the Examining Division
If the applicant, within the period under Rule 71(3) EPC, requests amendments or corrections to the communicated text which are reasoned, pursuant to Rule 71(6) EPC the Examining Division will issue a new communication under Rule 71(3) EPC if it gives its consent; otherwise it will resume the examination proceedings 8 .
In that case, the applicant will not be required to pay the fee for grant and publishing or any claims fee in reply to the first communication under Rule 71(3) EPC, nor will he be required to file any translations of the claims within this period.
This also applies if the applicant requests the reversal of amendments proposed by the Examining Division in the Rule 71(3) EPC communication.
Furthermore, it also applies if the Rule 71(3) EPC communication was based on an auxiliary request and the applicant replies by requesting that a grant be based on a higher request 9 .
Although the payment of fees in response to the Rule 71(3) EPC communication is not required where the applicant files amendments or corrections in his response thereto, the applicant can still pay these fees voluntarily 10 . If he does so, pursuant to Rule 71a(5) EPC the amount of a fee paid in response to the first Rule 71(3) EPC communication is credited towards the amount of this same fee due in response to the subsequent Rule 71(3) EPC communication if a further such invitation is issued 11 . It is important to note that the crediting of claims fees and the fee for grant and publishing is dealt with separately. If there is an increase in this fee, or an increase in the number of claims, between the first and the subsequent Rule 71(3) EPC communications, the difference must be paid within the period for reply to the subsequent Rule 71(3) EPC communication. 12
NB: If the text on which the Rule 71(3) EPC communication is based contains fewer claims than the set of claims in respect of which claims fees were paid on filing under Rule 45 EPC or on entry into the European phase under Rule 162 EPC, no refund of claims fees will be made. 13
If the applicant fails to pay the fee for grant and publishing or the claims fees or to file the translation in due time, the application is deemed to be withdrawn pursuant to Rule 71(7) EPC. In that case, the applicant may request further processing under Article 121 EPC 14 .
The omitted act in respect of this further processing request is either, depending on the intention of the applicant when he missed the time limit:
(i) completion of all of the following acts referred to in Rule 71(3) and (4) EPC:
(a) payment of the fee for grant and publishing,
(b) payment of any claims fees due, and
(c) filing of the translations of the claims; or
(ii) completion of one or more of the following acts:
(a) filing amendments and/or corrections to the application documents,
(b) rejecting amendments proposed by the Examining Division in the communication under Rule 71(3) EPC, or
(c) requesting a grant to be based on a higher request with respect to the auxiliary request on which the Rule 71(3) EPC communication was based 15 .
Once all the requirements set out in Rule 71a(1) EPC are met, the decision to grant the European patent is issued, provided that renewal fees and any additional fees already due have been paid.
If a renewal fee becomes due after notification of the Rule 71(3) EPC communication but before the next possible date for publication of the mention of the grant of the European patent, pursuant to Rule 71a(4) EPC the decision to grant is not issued and the mention of the grant is not published until the renewal fee has been paid. If the renewal fee or any additional fee is not paid in time, the application is deemed to be withdrawn.
In the rare case that examination was accelerated to such an extent that the communication under Rule 71(3) EPC is issued before the designation fee becomes due, pursuant to Rule 71a(3) EPC the decision to grant will not be issued and the mention of the grant of the patent will not be published until the designation fee has been paid. The applicant is informed accordingly 16 .