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FAQ - new practice of the EPO’s first-instance departments on the application of Rules 49 and 50 EPC with respect to handwritten amendments

As of 1 January 2014, the first-instance departments of the EPO no longer accept handwritten amendments in documents replacing parts of the European patent application, in strict application of Rules 49(8) and 50(1) EPC. Under Rule 86 EPC this also applies to amendments in patent specification documents in opposition proceedings. This change of practice was announced in a Notice from the EPO dated 8 November 2013 (OJ EPO 2013, 603). The present list of frequently asked questions is intended to provide additional information on the changed practice, as well as on technical details. It is meant to serve as general information, without prejudice to the competence of the departments entrusted with the procedure.

Questions

Answers

Why did the EPO change its practice?

The EPO is successively modernising its IT systems. To enable the electronic processing of the  publication of patent applications and of the application documents serving as the basis for the published patent specification (“Druckexemplar”), application documents and amended patent specifications must be available in a form recognised by OCR software. This is not possible with handwritten amendments.


What does the change of practice mean?

According to Rule 49(8) EPC, the description, claims and abstract, as well as the request for grant, must be typed or printed. By virtue of Rules 50(1) and 86 EPC, this applies to documents replacing application documents and to amended patent specification documents as well. Handwritten amendments in such documents are no longer accepted. The only exceptions provided for in Rule 49(8) EPC are graphic symbols and characters and chemical and mathematical formulae. Moreover, the unambiguous striking out of lines or words is not deemed to constitute a formal deficiency.


To which documents does the new practice apply?

The new practice applies to any of the above-mentioned documents filed in proceedings before first-instance departments on or after 1 January 2014.


What are the consequences of filing documents that contain handwritten amendments?

If any of the above-mentioned documents containing handwritten amendments are submitted in proceedings before first-instance departments, they will be considered formally deficient. Applicants or patent proprietors will be given an opportunity to correct such a formal deficiency. If the deficiency is not remedied within the time limit set, the consequences provided for in the EPC will apply (refusal, deemed withdrawal or revocation, as the case may be).


Does the new practice imply that handwritten amendments cannot be submitted under any circumstances?

No. Rule 49(8) EPC applies only to application documents and, by virtue of Rules 50(1) and 86 EPC, to those replacing them and amended patent specification documents. This means that documents other than those replacing a part of an application or patent may still be submitted with handwritten amendments (cf. Rule 50(2) EPC).


Does the new practice affect the way in which amendments and the basis for them can be indicated as required by Rule 137(4) EPC?

No. By virtue of Rule 50(2) EPC, amendments and the basis for them may continue to be indicated in handwritten form. If this is done, a clean copy complying with the requirements of Rule 49(8) EPC must be filed in addition. If amendments are indicated in printed form by using the “track changes” mode of word processing software, the filing of a separate clean copy is not mandatory; however, in the interest of smooth electronic processing, it is recommended to file a clean copy also in this case.”


How are electronic copies of the documents made available by the EPO?

In its Notice dated 8 November 2013 (OJ EPO 2013, 603), the Office announced that it would provide applicants and patent proprietors with electronic copies of their “Druckexemplar” or patent specification (EP-B). It does so by making those documents available for downloading.

Patent specifications are made available via the European publication server. This can also be accessed from the European Patent Register. The same applies to A documents; if the EPO was not the receiving Office, the publication server contains a link to the electronic publication by WIPO.

Copies of the “Druckexemplar” are made available via the online file inspection facility of the European Patent Register.


In what format are these documents made available?

Documents made available via the European publication server are normally available in both PDF and XML format. In particular, the XML version can either be processed directly, or can be used to create a document that can be edited with normal word processing software such as MS Word. Similarly, text can be copied from the PDF version. For documents published prior to 2006, only the PDF and SGML versions in the ZIP file are accurate. For certain A publications, in particular those for which the EPO was not the PCT receiving Office, the pamphlet published by WIPO is only an image version in the electronic file and thus cannot be copied into an editable version. Extracts from the image can, however, be used to form an image version of typed amendments.

Documents available via the online file inspection facility of the European Patent Register are in PDF format, and normally only in the form of an image version. Again, extracts from image can be used to form an image version of typed amendments.


How is the new practice applied during oral proceedings?

Responsibility for formally correct submissions and, in particular, for compliance with Rule 49(8) EPC lies solely with the applicant/proprietor. This applies also with regard to oral proceedings. Documents containing handwritten amendments may be used as a basis for discussion during oral proceedings until agreement is reached on the final text of the patent; a final decision granting a patent or maintaining it in amended form may be taken only on the basis of a document which is not formally deficient.

In order to assist the parties in such circumstances, the Office provides technical facilities that allow for compliance with the formal requirements while at the same time ensuring smooth conduct of the oral proceedings.

If an applicant or proprietor does not succeed in submitting formally correct documents during oral proceedings, documents can be filed with handwritten amendments but will be considered formally deficient. Where, on the basis of formally deficient documents, it appears that there is patentable subject-matter, the proceedings will be continued in writing. Applicants or patent proprietors will be given an opportunity to correct such a formal deficiency. If the deficiency is not remedied within the time limit set, the consequences provided for in the EPC will apply (refusal, deemed withdrawal or revocation, as the case may be).


Which technical facilities may be used during oral proceedings?

Parties using their own laptops or other electronic devices to prepare amendments may rely on the EPO’s public wireless network, which is widely available in public areas, or on printers available at the EPO.

For parties not using their own electronic equipment, the EPO provides for PCs and printers in the attorney rooms as well as in many rooms used for oral proceedings. In addition each attorney room is equipped with at least two PCs and one local printer. The local printer can be used via either the EPO PC or an external laptop which can be connected to the local printer via USB cable, allowing direct use.

In addition, EPO LAN printers allow PDF documents to be printed directly from a standard USB stick (FAT32 filesystem). It is sufficient to insert a USB stick into the USB port of the printer on the left-hand side of the front panel. Then using the touchscreen control panel, select “Print from USB” and choose a PDF document to be printed.

State-of-the-art text editing software (such as MS Word, OpenOffice, etc.) provides options for saving any document as a PDF file, which then can be stored on a USB stick and printed from a LAN printer.

If oral proceedings are held as a video-conference, documents may be submitted by e-mail in accordance with the Decision of the President of the EPO dated 20 April 2012, OJ EPO 2012, 348.

Download instructions for accessing EPO wireless network (PDF, 46 KB)


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