EUROPEAN PATENT OFFICE
Information from the EPO
Notice from the European Patent Office dated 23 July 2020 concerning the pilot project on notification by email during examination proceedings under the decision of the Vice-President Legal and International Affairs (Directorate-General 5) of the European Patent Office dated 23 July 2020.
Since 2012, the EPO has been gradually providing users with the possibility of filing submissions by email in certain specified circumstances.1 Considering the need to communicate more effectively with applicants at a critical phase of the grant proceedings, namely in the period immediately before the oral proceedings, and the need to reduce paper consumption, the EPO has decided to launch a pilot project permitting examining divisions to use email to notify important information about oral proceedings (see decision of the Vice-President Legal and International Affairs (Directorate-General 5) of the European Patent Office dated 23 July 2020). The main objective of this pilot project is to test the suitability and reliability of using email instead of fax in such cases.
This notice provides further information on the pilot project.
1. Scope of the pilot project
The pilot project will be limited to notices and other communications from which no time limit is reckoned. These notices or communications are usually issued to inform applicants of a decision of the examining division to maintain, postpone or cancel oral proceedings and the reasons for that decision (i.e. Form 2008A and, where appropriate, Form 2906) or of its preliminary assessment of any submissions received by the date set under Rule 116(1) EPC.
Applicants will similarly have the option of using email to reply to such notices and communications, subject to certain conditions (see point 3 of this notice).
2. Framework for notification by email
The applicant's consent to receiving notices or communications by email is an essential requirement for their notification in this form. Examining divisions participating in the pilot project will therefore invite applicants to give their consent either in the annex to the summons to oral proceedings or in a stand-alone communication.
To consent to participation in the pilot project and so to being notified by email, applicants simply need to provide the EPO with an email address to which they wish the notices and communications covered by the pilot project to be sent (hereinafter: main email address). They must provide this main email address by the final date for making written submissions fixed under Rule 116(1) EPC. The EPO cannot guarantee that an email address provided after that date will be processed in time. Besides the main email address, applicants may also provide a second email address, e.g. the email address of the employee or representative in charge of the application, to which the EPO will simultaneously forward a copy of any notice or communication as a courtesy service.
Any notice or communication notified by email will be sent from a central email account (hereinafter: central email account) administered by the participating directorate to which the examining division concerned belongs. It will be sent as an attachment in PDF format. If written submissions have been filed under Rule 116 EPC and the examining division considers it appropriate to inform the applicant ahead of the oral proceedings of its preliminary assessment of those submissions, including any information as to new relevant prior art, a copy of the documents concerned will also be attached to the email in PDF format.
The EPO will test whether the main email address provided by the applicant is functioning properly before sending any notices or communications by email under the pilot project.
Applicants will be required to promptly acknowledge receipt of any notice or other communication which the examining division has notified by email by replying to that email, confirming that they have received it. The functionality "request a delivery receipt" offered by most email applications is not considered reliable, as the recipient organisation often does not allow the issue of a delivery report. If no acknowledgement of receipt is received within 24 hours of transmission of the email, the examining division will contact the applicant. No mechanism will be put in place to verify receipt at the second email address.
The transmission by email of any notice or other communication covered by the pilot project will have the effect of a notification by means of electronic communication under Rule 127 EPC. No paper copies will be notified in parallel. For the purposes of settling a dispute within the meaning of Rule 127(2), second clause, EPC, the full content of the email, including the main email address, will be made available for inspection in the public file.
3. Conditions applicable to written submissions filed by applicants by email
Written submissions filed by email in reply to any notice or other communication notified by the examining division by email will have legal effect only if they are sent to the central email account.
The EPO will promptly issue an acknowledgement of receipt by email. If applicants do not receive this acknowledgement of receipt within one working day or if they see that the submissions they filed by email have not been uploaded to the public file, they may enquire whether the EPO has received their email by contacting its Customer Services using the dedicated online form available on the EPO website.
The requirements applicable to the signature and format of documents filed by email laid down in the decision of the President of the European Patent Office dated 13 May 2020 concerning the filing of documents during telephone consultations and during interviews and oral proceedings held by videoconference (see OJ EPO 2020, A71) apply mutatis mutandis. In particular, where any attachments are illegible or incomplete, the EPO will promptly invite the applicant by email to remedy the deficiency.
The EPO will endeavour to ensure that emails coming from the addresses specified by the applicant are intercepted by any spam or malware filters in place only if they are infected with a computer virus or contain any other malicious software.
Any exchanges by email falling within the scope of the pilot project will be added as such to the file and made available for public inspection.
4. Duration of the pilot project and next steps
The pilot project will run for one year starting on 1 September 2020. Its scope may be changed or limited at any time during this term. The pilot project may also be extended or discontinued. At the end of the pilot phase, the EPO will assess the experience gathered to determine whether and how notification by email should be fully implemented.
1 See notice dated 12 September 2000 concerning correspondence with the Office via e-mail, OJ EPO 2000, 458; and decision of the President of the European Patent Office dated 20 April 2012 concerning the filing of documents by e-mail during interviews and oral proceedings held as a video-conference, OJ EPO 2012, 348, later superseded by decision of the President of the European Patent Office dated 13 May 2020 concerning the filing of documents during telephone consultations and during interviews and oral proceedings held by videoconference, OJ EPO 2020, A71.