Notice from the European Patent Office dated 25 November 2022 concerning legal changes to support digital transformation in the patent grant procedure
1. By decision of 13 October 2022,[ 1 ] the Administrative Council of the European Patent Organisation adopted a set of legal changes to the Implementing Regulations to the Convention on the Grant of European Patents (EPC) that will support the ongoing digital transformation in the patent grant procedure at the European Patent Office (EPO) and strengthen alignment with the Patent Cooperation Treaty (PCT). In this context, it delegated the authority to decide on the presentation requirements of application and other documents to the President of the EPO. This rule change and a decision of the President restating the current requirements[ 2 ] will enter into force on 1 February 2023. Furthermore, the Administrative Council adopted amendments to Rule 65 EPC governing the transmittal of documents cited in search reports and to Rules 126, 127 and 131 EPC on notification and time limit calculation, which will apply as of 1 February 2023 and 1 November 2023 respectively.
II. Presentation requirements of documents
a. Changes to the Implementing Regulations to the EPC
2. Article 78 EPC defines the requirements of a European patent application. It lists the documents making up the application as being the request for grant, the description, the claims, the drawings and the abstract.
3. Currently, Rules 46, 49 and 50 EPC implement certain aspects of Article 78 EPC. Rule 46 EPC defines the form of the drawings and Rule 49(2)-(12) EPC defines the presentation requirements which all documents making up the application must meet. According to Rule 50(1) EPC these requirements apply equally to documents replacing the application documents. Rule 50(2) EPC provides formal requirements for documents other than application documents. Rules 57(i) and 82(2) EPC govern the examination of compliance with these provisions.
4. Under the revised rules, the power to set the presentation requirements is delegated to the President of the EPO. Corresponding enabling clauses can be found in Rules 49(2) and 50(2) EPC. Rules 46 and 49(3)-(12) EPC are deleted and references to them in Rules 50(1), 57(i) and 82(2) EPC are adapted.
5. This delegation of power provides for a flexible regulatory system that ensures rapid and easy adjustment of these provisions to developments in the EPO's digital systems. The current provisions were drafted with a paper-based procedure in mind, before for example online publication of high-quality, colour documents was feasible. They are to be modernised once the EPO's IT tools are ready for end-to-end processing in colour. The modernisation of the provisions will furthermore allow different requirements to be prescribed for electronically filed documents and those filed on paper, considering the specific requirements for these filing methods. For instance, it is likely that it will first be possible to process and allow electronically filed colour drawings and only later paper-filed ones. For electronic filings it may also be possible to replace page numbers with paragraph numbers.
b. Decision of the President of the EPO on the presentation of application and other documents
6. The first decision of the President under the enabling clauses enters into force on 1 February 2023 and does not contain any changes to the presentation requirements of documents. Changes to the requirements will be made after discussion at international level (in the PCT context), with EPC contracting states and with users, and will enter into force by way of a revised decision of the President.
7. In addition, the first decision of the President restates the current requirements in a consolidated manner: presentation requirements for application and other documents are included in one single decision of the President, which also contains the requirements for drawings. The requirements for application documents (including those for drawings) apply both to documents making up the application and to documents replacing these documents. The requirements under Article 2 of the decision also apply to the translation of the claims referred to in Rule 71 EPC.[ 3 ]
8. The decision also reflects the EPO's current practice regarding the examination of presentation requirements. The Receiving Section does not examine those requirements that relate to the content of the application or are more technical.[ 4 ] The examining division focuses on these requirements if checks have already been made by the Receiving Section and the examining division assumes responsibility for the application under Rule 10 EPC.[ 5 ] Any examination by the EPO of the requirements listed in Article 4(2) of the decision is limited to the extent necessary for the purpose of a satisfactory reproduction or a reasonably uniform publication of the application under Rule 68(1) EPC.[ 6 ] This is today's practice[ 7 ] and aligns the EPO legal framework with the PCT.[ 8 ]
9. The decision also clarifies which formal requirements apply if a European patent is maintained in amended form during opposition proceedings. As today, the applicable requirements under Rule 82(2), third sentence, EPC are that the amendments must be made in typed or printed form in the manner specified.[ 9 ] If in oral opposition proceedings the interlocutory decision of the opposition division has been based on documents not complying with these requirements, the formalities officer will request the patent proprietor to file a formally compliant verbatim version of amended text passages once the interlocutory decision becomes final.[ 10 ]
III. Transmittal of documents cited in search reports
10. The amendment of Rule 65 EPC governing the transmittal of the European search report lays the legal groundwork for offering more advanced EPO digital services in the future. The revised provision will enable the EPO to make the documents cited in search reports available to applicants through new digital services and not only to transmit them to the Mailbox or by post, as is the case today. These new services would allow electronic access to all kinds of citation, including multimedia and internet citations.
11. The amended Rule 65 EPC is split into two sentences. The first sentence governs the transmittal of the search report, which, together with the search opinion, will continue to be transmitted to the applicant electronically to the Mailbox or by post. The new second sentence specifies that the cited documents will be made available.
12. This amendment will enter into force on 1 February 2023. Since the solution for digital access to cited documents has not yet been designed, the entry into force of the amended provision will initially not result in a change to the EPO's practice. The new solution will be announced separately.
IV. Notification and time limit calculation
13. The amendments to Rules 126(2), 127(2) and 131(2) EPC concern the main notification methods – notification by postal services and by electronic means – as well as the calculation of periods in proceedings before the EPO.
14. Amended Rules 126(2) and 127(2) EPC introduce a new notification fiction, according to which postal and electronic notification are deemed to occur on the date of the document. Under established EPO practice, the date of the document is the date on which it is handed over to a postal service provider in the case of postal notification or the date of its electronic transmission in the case of electronic notification. The revised notification fiction can be found in the first sentence of amended Rules 126(2) and 127(2) EPC. As a result, the current notification fiction under these provisions, according to which the deemed notification of a document occurs ten days after it has been issued, will be abandoned.
15. The second sentence of Rules 126(2) and 127(2) EPC as amended governs the burden of proof in exceptional cases where notification is disputed. As today, the EPO will have to demonstrate the fact and the date of delivery in such instances. Where a notification dispute leads to the conclusion that a document has been delivered exceptionally late, a new safeguard introduced in the last sentence of revised Rules 126(2) and 127(2) EPC will apply. In particular, if the EPO cannot show that a document has reached the addressee within seven days of the date it bears, the relevant period will be extended by the number of days by which these seven days are exceeded.
16. Finally, amended Rule 131(2) EPC provides that, in the case of notification, it is the deemed receipt of the document notified which will constitute the relevant event for the purposes of time limit calculation. As a result, periods will be triggered by deemed notification under revised Rules 126(2) and 127(2) EPC.
17. The amendments to Rules 126(2), 127(2) and 131(2) EPC will enter into force on 1 November 2023. They will apply to documents notified by postal services or electronic means on or after this date. Dedicated information on the new notification fiction, the topic of burden of proof in the case of notification disputes, the application of the new safeguard, as well as the resulting computation of periods will be published in March 2023.
[ 4 ] Articles 1(2)(i) and (j) and 2(8), fourth sentence, (9) and (10) of the decision of the President of the European Patent Office dated 25 November 2022 on the presentation of application and other documents, OJ EPO 2022, A113.
[ 5 ] Guidelines for Examination in the EPO, 2022 edition, A-III, 3.2.
[ 7 ] Guidelines for Examination in the EPO, 2022 edition, A-III, 3.2.
[ 10 ] Guidelines for Examination in the EPO, 2022 edition, D-VI, 7.2.3.