Decision of the Vice-President Legal and International Affairs of the European Patent Office (Directorate-General 5) dated 19 August 2021 concerning the conditions for participating in the user area pilot

This text is intended for publication in the Official Journal (OJ) of the EPO. It is made available in advance on the EPO website merely as a courtesy to the public. Only the text subsequently published in the officially certified PDF file of the OJ is authentic. It cannot be guaranteed that this advance version accurately replicates that text.

In accordance with Article 12 of the decision of the President of the European Patent Office (EPO) dated 11 March 2015 concerning the pilot project to introduce new means of electronic communication in EPO proceedings (OJ EPO 2015, A28) the user area pilot is launched. Pilot participants will receive notifications in the Mailbox, may submit procedural requests, perform other procedural acts and file accompanying documents in the web-based user area, subject to the applicable regulations of the European Patent Convention (EPC) and Patent Cooperation Treaty (PCT) and the provisions of this decision.

Article 1

Scope of the user area pilot

1. By logging into the user area, access to the following services is provided:

(a) electronic notification via the Mailbox,

(b) electronic filing, as specified in Article 5 below,

(c) viewing of the application portfolio,

(d) upon further announcement, further services.

2. The user area pilot will start with a number of functionalities within the services under Article 1(1) above. Upon further announcement, functionalities may be added.

3. The availability of services provided in the user area may be limited to specific categories of pilot participants. At the start of the pilot access to the Mailbox is available for professional representatives, legal practitioners (Article 134(8) EPC) and applicants who have their residence or place of business in an EPC Contracting State, provided they have activated an EPO Mailbox. At the start of the pilot viewing the application portfolio and the electronic filing services are available for European professional representatives.

Article 2

Start of the user area pilot

The user area pilot starts on 2 November 2021.

Article 3

Conditions for participation

Any user with a smart card and activated Mailbox may participate in the user area pilot upon registration and invitation by the EPO.[ 1 ]

Article 4

Electronic notification

1. Electronic notification is effected by electronic communication to the Mailbox. Pilot participants may access the Mailbox via the user area or through the existing Mailbox service.

2. Article 9 of the decision of the President of the European Patent Office (EPO) dated 11 March 2015 concerning the pilot project to introduce new means of electronic communication in EPO proceedings (OJ EPO 2015, A28) applies mutatis mutandis to electronic notification to the Mailbox and access via the user area.

Article 5

Electronic filing

1. Via the user area, pilot participants may perform procedural acts in reply to a communication from the EPO within a prescribed period (ʺtasksʺ), file procedural requests (ʺactionsʺ) and submit accompanying documents. The list of pending tasks will be displayed in the task menu and will indicate the final date for performing each of them.

2. Any accompanying documents must be filed in PDF, TIFF, or DOCX format. Documents in PDF or TIFF format must comply with the definition of these formats provided in the Administrative Instructions under the PCT, Part 7 and Annex F[ 2 ]. Documents in DOCX format must comply with the specifications in the format definition published by the European Patent Office[ 3 ].

3. Procedural acts performed by pilot participants will be reflected in an electronic document automatically generated within the submission session.

4. The document referred to in Article 5(3) and any accompanying documents must be authenticated by the pilot participant by pressing the unique button foreseen for authentication and submission. The documents authenticated in such way are deemed to meet the legal requirement of signature.

5. The document referred to in Article 5(3) and any accompanying documents will be inserted into the file and will be made available for public file inspection according to Article 128 EPC.

(6) From the start of the pilot project, pilot participants will first only be able to reply to the communication about the intention to grant (Rule 71(3) EPC). This includes requests for correction of errors in the bibliographic data of the application following verification under Rule 71(5) EPC.

7. Upon further announcement, additional tasks and actions may be added, including but not limited to:

(a) the reply to a communication under Article 94(3) EPC,

(b) the reply to the extended European search report (Rule 70a EPC),

(c) submissions in preparation for oral proceedings during substantive examination (Rule 116 EPC),

(d) requests for correction or update of bibliographic data,

(e) requests for the registration of transfers of rights (Rule 22 EPC), and

(f) notices of withdrawal from representation.

8. The inclusion of a procedural act on the task menu is a service of the EPO. The pilot participants may not invoke the omission of a task.

9. Receipt of documents filed via the user area is acknowledged electronically by the EPO following successful submission. The acknowledgment of receipt is provided digitally signed by the EPO within the submission session.

10. The regulations concerning the electronic filing of documents apply mutatis mutandis to any filing in accordance with paragraph 1.[ 4 ]

Article 6

Viewing of the application portfolio

Viewing of the application portfolio in the user area allows European professional representatives to inspect the files in respect of the European patent applications and granted European patents for which they are appointed, including unpublished European patent applications, in accordance with Article 128 EPC and Rule 144 EPC. Access to the My Files service is unaffected by the participation in the user area pilot project.

Article 7

Formal and technical requirements

The formal and technical requirements to be complied with are provided in the user area and the accompanying documentation made available to the users.

Article 8

Existing methods of filing documents, notification and file inspection

Services within the user area pilot are without prejudice to the existing methods of filing documents, electronic notification and file inspection.

Article 9

Changes to the user area pilot project

Upon further announcement, the EPO may change the starting date of the user area pilot project, limit its scope or otherwise change it, in whole or in part, as well as discontinue it.

Done at Munich, 19 August 2021

Christoph Ernst

Vice-President Legal and International Affairs of the European Patent Office

(Directorate-General 5)


 

[ 1 ] See the call for participants published on the EPO website.

[ 2 ] See Annex F to Administrative Instructions under the Patent Cooperation Treaty, Standard for the filing and processing in electronic form of international applications, available at www.wipo.int.

[ 3 ] The definition for ʺDOCX" of the pilot project for Online Filing 2.0 applies equally for the user area pilot, see definition of "DOCX" under Article 4 of the decision of the Vice-President Legal and International Affairs of the European Patent Office (Directorate-General 5) dated 21 April 2020 concerning the conditions for participating in the pilot project for Online Filing 2.0 (OJ EPO 2020, A45).

[ 4 ] See in particular the decision of the President of the European Patent Office dated 3 March 2021 concerning the electronic filing of documents (OJ EPO 2021, A20) which will be superseded by the decision of the President of the European Patent Office dated 14 May 2021 concerning the electronic filing of documents (OJ EPO 2021, A42). See also the notice from the European Patent Office dated 9 May 2018 concerning the electronic filing of documents (OJ EPO 2018, A46) and the notice from the European Patent Office dated 22 October 2020 concerning the procedures and safeguards which apply under the EPC and the PCT in the event of outages of means of electronic filing and other online services.

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