Quality of the patent grant process at the centre of exchanges with user representatives in SACEPO

On 11 April 2024, improving the quality of our patent grant process was again in focus at the SACEPO Working Party on Rules (WPR), who met in their new composition following the appointment of members by the President of the EPO earlier this year.

Experts from across the patent profession continue to work with the EPO to make the patent grant process even better suited to the digital age. In this latest meeting of the WPR, discussions focussed on the so-called “second basket” of legal changes, particularly those measures which are currently under implementation, including:

• handling multimedia citations,
• the Contingency Upload Service and the possibility for emergency fee payment,
• the filing of third party observations,
• data in the database of representatives,
• electronic priority documents,
• authorisations and representation, especially the proposal to treat professional representatives and legal representatives equally with regard to filing authorisations.

During the lively exchanges the WPR welcomed proposals to allow colour drawings, noting the need to harmonise with the PCT framework. Users see advantages in the planned digital access to patent documents cited in search reports, and also welcomed the new features available in MyEPO Portfolio as of 1 April 2024, especially the facilities of the Shared Area. 

The remarkable progress in the programme for convergence of practice – jointly conducted by the EPO and national IP offices – was also commended by user representatives who welcomed the new online dashboard and praised the programme’s contribution to global harmonisation efforts.

The EPO also updated SACEPO members on the recent entry into force of the fee policy reform adopted in 2023, drawing users' attention to the available information published online, including Notices in the Official Journal and FAQs. The WPR made practical suggestions for further simplifying the fee system.

The acceleration of opposition proceedings where parallel cases are pending before the Unified Patent Court or national courts is another area where recent changes to practice have increased legal certainty and thus ultimately the quality of the European patent system. SACEPO members appreciate the transparency accelerated  processing of opposition proceedings provides whenever the Office is informed by e.g. the Unified Patent Court that an infringement or revocation action relating to a European patent or a Unitary Patent has been commenced, and they encouraged the Office to inform also the national courts about the actions. 

The Institute for Professional Representatives before the EPO (the epi) tabled a proposal relating to Rule 83 EPC to the effect that documents already available on the electronic file (e.g. in Espacenet) need not be filed again by the parties. SACEPO members shared practical experiences and supported the proposal in principle as a step towards simplification enabled by digitalisation.

Once again dialogue with user representatives provided valuable input and feedback, helping the Office to continue to improve its products and services as well as to develop initiatives that meet the evolving needs of our applicants.