Article 34

EUROPEAN PATENT OFFICE

Information from the EPO

Notice from the European Patent Office dated 15 March 2024 concerning amended Rules 1, 41, 147 and 152 EPC

By decision dated 14 December 2023, the Administrative Council of the European Patent Organisation adopted a set of amendments to the Implementing Regulations to the Convention on the Grant of European Patents (EPC) that will further support the ongoing digitalisation and simplification of the patent grant procedure at the European Patent Office (EPO).1 The amendments will enter into force on 1 April 2024 and concern five rules in the Implementing Regulations, namely Rules 1, 22, 41, 147 and 152 EPC. This notice relates to the amendments to Rules 1, 41, 147 and 152 EPC. The amendments to Rule 22 EPC have already been covered in two decisions of the President of the EPO and a separate notice from the EPO.2

Rule 1 EPC: written proceedings

Rule 1 EPC governs the requirement to use the written form in written proceedings before the EPO and the conditions under which this requirement is met. Since the adoption of Rule 1 EPC in 2007, working practices have changed significantly. To reflect the wide-ranging technological advances that have been made in the meantime and the associated increase in the use of digital tools, Rule 1 EPC has been amended to remove the words "on paper" from its final sentence.

Under amended Rule 1 EPC, a document which can be reproduced on paper will still satisfy the requirement to use the written form. The requirements under Rule 49 EPC and the decision of the President of the EPO dated 25 November 2022 on the presentation of application and other documents (OJ EPO 2022, A113) will continue to apply.

Rule 41 EPC: requirements for request for grant

Rule 41(2) EPC lists the items which must be included in a request for grant of a European patent or whose inclusion is recommended.

The EPO will decommission fax as a means of filing in patent grant proceedings from 1 July 2024. The recommendation that a fax number be indicated in a request for grant of a European patent has therefore been removed in amended Rule 41(2)(c) EPC.

Rule 147 EPC: constitution, maintenance and preservation of files

The means of electronically filing documents in patent grant proceedings include accepted electronic data carriers, i.e. CDs and DVDs, which then need to be physically stored. In the interests of sustainability and efficiency, amended Rule 147(3) EPC will introduce a preservation period for data carriers that is in line with the one already applicable to initially filed paper versions of documents. This means that, like initially filed paper documents, data carriers will only be destroyed after expiry of at least five years from the end of the year in which the documents on them were incorporated into the related electronic file.

The five-year preservation period for data carriers introduced by amended Rule 147(3) EPC will not expire before 31 December 2024, regardless of the date on which the documents were incorporated into the electronic file.

Rule 152 EPC: authorisations

Under amended Rule 152(2) EPC, representatives invited by the EPO to file an authorisation will no longer be required to file multiple copies, which will simplify this aspect of the patent grant procedure. In the interests of clarity and consistency, Rule 152(4) EPC therefore no longer mentions that a single copy of a general authorisation is sufficient.