Recent and upcoming procedural changes

Christina ten Hövel The Hague, 19.04.2016

Recent and upcoming procedural changes

Recent and upcoming procedural changes

• Validation agreements

• New International Searching Authorities

• Exemption from filing prior search results

• Fee adjustments

• Online filing of documents in appeal proceedings

• Filing of requests for accelerated search or examination

• Amended Rule 82 EPC

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Validation agreements

Morocco 01.03.2015

Moldova 01.11.2015

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OJ EPO 2015, A18-A20, A 84-85, OJ EPO 2016, A5

The validation agreement with Morocco entered into force on 01.03.2015.

The validation agreement with Moldova entered into force on 01.11.2015.

• EPO Form 1001• EPO Form 1200

refer to “validation”, “validation fee”, validation agreement”.


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The same time limits for payment as for “extension” apply to “validation” fees

Detailed information about the validation agreement with Moldova was published in the OJ of January 2016.

It is foreseen that one further validation agreement (Tunisia) will enter into force in the coming months.


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Morocco:

• Validation fee: EUR 240 (fee code 420)• Surcharge for late payment: EUR 120 (fee code 450)

Moldova:

• Validation fee: EUR 200 (fee code 421)• Surcharge for late payment: EUR 100 (fee code 451)


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New International Searching Authorities

UA as of 05.02.2016

VP as of 01.07.2016

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OJ EPO 2016, A2

New ISA/SISA/IPEA UA

• The State Intellectual Property Service of Ukraine (SIPSU)

began operating as ISA/SISA/IPEA as from 05.02.2016

No reduction of the search fee is applicable for the

supplementary European search performed on entry into

the European phase!

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New ISA/IPEA VP

• The Visegrad Patent Institute (Poland, Slovakia, Czech Republic,

Hungary) will begin operating as ISA/IPEA as from 01.07.2016

The fee for the supplementary European search will be

reduced by EUR 1110.00 (as for the other European

International Searching Authorities)!

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Exemption under Rule 141(2) EPC from filing a copy of the search results

ES as of 01.06.2016

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Decision of the President and Notice from the European Patent Office dated 10 February 2016, OJ EPO 2016, A18, A19

Exemptions from filing prior search results

EPO includes a copy of the search results into the file where

• the priority of a first filing made in one of the following states is claimed:

– Austria

– Korea

– Japan

– United Kingdom

– United States of America

– Denmark

– Spain (as of 01.06.2016)

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Fee adjustments

as of 01.04.2016

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Decision of the Administrative Council of 16 December 2015 (CA/D 12/15), OJ EPO 2016, A3

Fee adjustments

• Inflation-based biennial adjustment of procedural fees

• New amounts apply to any payments received at EPO (Art. 7

RFees) as from 01.04.2016 – date of payment

• For any payments made in due time but in the old amounts via

bank transfer, within six months of entry into force, deficit may

be paid within two months of an invitation from the EPO

• For payments made via deposit account, ex-officio debiting of

correct amounts

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Fee adjustments

• Not all procedural and administrative fees adjusted, e.g. no

increase of

– Filing fee

– Additional fee for 36th and each subsequent page (page fee)

– Additional fee for divisional applications of 2nd generation

but increase of the additional fee for divisional applications

of 3rd and subsequent generations!

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Fee adjustments

• No increase of

– Claims fee for the 16th to the 50th claim

but increase of the claims fee for the 51st and subsequent

claims

See OJ EPO 2016, A3 as well as EPO website for all details!

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Online filing of documents in appeal proceedingsFiling and signature requirementsas of 16.11.2015

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Decision of the President of the European Patent Office dated 10 November 2015 concerning the electronic filing of documents, OJ EPO 2015, A91

Online Filing in appeal proceedings

Online filing tools

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eOLF:

• filing is allowed since 2009• see OJ EPO 2015, A26

CMS:

• filing is allowed since 01.04.2015• see OJ EPO 2015, A27

WFF:

• filing is not allowed• see OJ EPO 2014, A98

Online filing in appeal proceedings – signature CMS

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• Signature of the authorised representative is required

• Facsimile signature or text string signature are allowed

• For sending purposes the smart card of the representative is not needed

The enhanced electronic signature is not available in CMS!

The facsimile or wet signature of the representative on a PDF attachment cannot heal the formal deficiency if the electronic form (1038) has been signed by an unauthorised person!

Online filing in appeal proceedings – signature eOLF

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• Signature of the authorised representative is required

• Facsimile signature, text string signature, or enhanced electronic signature are allowed

For the enhanced electronic signature the Smart card of the representative is to be used!

The facsimile or wet signature of the representative on a PDF attachment cannot heal the formal deficiency if the electronic form (1038) has been signed by an unauthorised person!

Filing of requests for accelerated search or examination

as of 01.01.2016

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Notice from the European Patent Office dated 30 November 2015 concerning the programme for accelerated prosecution of European patent applications ("PACE"), OJ EPO 2015, A93

PACE request – General conditions

The request is to be filed online (eOLF, CMS, WFF)

The use of EPO Form 1005 is mandatory

The request is to be filed for one application at a time

A request may be filed once during each stage of the procedure

If a renewal fee is not paid by the due date, accelerated prosecution is suspended until payment of the renewal fee with surcharge

An application will be removed from the PACE programme if the application is withdrawn, deemed withdrawn or refused!

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PACE request – Accelerated search

No request for accelerated search needs to be filed for:

– European patent applications filed as of 01.07.2014

– Euro-PCT applications entering the European phase as of that date

Under the ECfS (Early certainty for search) programme, the EPO strives to issue the (supplementary) European search report within 6 months from the date of filing/ expiry of the period under Rule 161(2) EPC

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PACE request – Accelerated examination

The request may be filed once the examining division has become responsible for the application (request for examination is complete)

An application will be removed from accelerated prosecution if a time extension to reply to a communication from the Examining Division is requested

Requests filed during the search phase will not be taken into consideration!

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PACE request – Deficiencies

Request is filed on paper / by fax

Free text letter is sent

Request is filed too early

One request is filed for a list of applications

A request had already been filed before and the application was removed from accelerated prosecution

In case of any deficiency EPO Form 2569 is sent and the request will not be taken into consideration. As applicable, a new request needs to be filed!

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Amended Rule 82 EPC -Maintenance of the European patentin amended form

as of 01.05.2016

Decision of the Administrative Council of 14 October 2015 amending Rule 82 of the Implementing Regulations to the European Patent Convention (CA/D 9/15), OJ EPO 2015, A82Notice from the European Patent Office dated 9 March 2016 concerning amended Rule 82 EPC, OJ EPO 2016, A22

Notice from the European Patent Office dated 8 November 2013 concerning application of Rules 49 and 50 EPC to handwritten amendments, OJ EPO 2013, 603

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If a party disapproves of the text communicated by the Opposition Division, examination of the opposition may be continued. Otherwise, the Opposition Division shall, on expiry of the period under paragraph 1, invite the proprietor of the patent to pay the prescribed fee and to file a translation of any amended claims in the official languages of the European Patent Office other than the language of the proceedings, within a period of three months.

New:

Where, in oral proceedings, decisions under Article 106(2), or Article 111(2), have been based on documents not complying with Rule 49(8), the proprietor of the patent shall be invited to file the amended text in a form compliant with Rule 49(8), within the three-month period.

Amended Rule 82(2) EPC

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• Amended Rule 82(2) EPC applies to submissions in oral proceedings in opposition or opposition appeal proceedings

• The Opposition Division’s/board of appeal’s decision maintaining the patent in amended form may be taken based on amended documents which do not meet the formal requirements under Rule 49(8) EPC, i.e. contain handwritten amendments

– The unambiguous striking out of lines or words is not considered a formal deficiency!

• The proprietor will be invited to file a formally compliant version of the amended text within the three-month period of Rule 82(2) EPC


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• The patent proprietor is no longer required to provide documents compliant with Rule 49(8) EPC during oral proceedings prior to the decision establishing the text of the patent in amended form

• The formally deficient documents submitted during oral proceedings contain the authentic text of the patent maintained in amended form

– the filing of formally compliant documents is a formality which has no bearing on the content of the patent maintained in amended form!

• The proprietor has to submit replacement paragraphs and/or claims which contain a formally compliant verbatimreproduction!


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The requirements of Rule 82(2), 3rd sentence, and Rule 49(8) EPC are not fulfilled if

• no reply has been filed within the relevant time limit

• the replacement paragraphs/ claims are incomplete

• the replacement paragraphs/ claims are formally deficient

• there is a divergence between the formally deficient paragraphs/claims specified in the invitation and the replacement paragraphs/ claims submitted

Procedure under Rule 82(2) and (3) EPC

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• If a formally compliant verbatim version has not been filed in due time, the missing act can still be performed within two months from notification of the communication under Rule 82(3) EPC provided that a surcharge is paid

Otherwise the patent will be revoked!

Procedure under Rule 82(2) and (3) EPC - continued

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• EPO recommends parties to bring laptop or similar device and electronic copies of documents likely to be amended

• Suitable technical devices provided by EPO (e.g. PCs, printers allowing to print from USB sticks)

• Electronic copies made available for downloading

• A publications and B specifications (in PDF and XML) from European Publication Server

• “Druckexemplar” (in PDF) via the online file inspection facility of the European Patent Register

• See also www.epo.org: FAQ - new practice of the EPO’s first-instance departments on the application of Rules 49 and 50 EPC with respect to handwritten amendments

Documents amended during oral proceedings –best practice

Thank you for your attention!

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