Overview of Changes in EPC Practice
M. Nollen, (BE)
The following is an overview of changes in EPC practice. The changes are based on information in the Official Journal of the EPO (up to January 2019) and on the website of the EPO. Further details are to be reviewed via the OJ EPO.
Amendment to Article 2 of the Rules relating to Fees (per 1 April 2019)[1]
A new paragraph is inserted into Article 2 RFees in relation to fee changes that will not apply until a date set by the President of the Office. The applicable fees are fees relating to the use of a means of electronic communication or a document format. The background hereof is that the necessary IT developments need to be completed before the fee changes become applicable. It relates to the filing fee, the fee for grant and the transmittal fee. So, when using online filing, the amounts remain the same until further notice.
Amendment of Filing fee for non-online filings
As of 1 April 2019, the filing fee for non-online filings will be EUR 250. It will apply to payments made on or after 1 April 2019.
Grace period for wrong fee payment
A grace period of 6 months starting from 1 April 2019 is provided[2]. During this grace period, a payment in due time but only in the amount applied before 1 April 2019 will not lead to a loss of rights if the difference is made good within two months of an invitation to that effect from the Office.
Refunds of Search Fees
A revision is made on refunds of search fees, where the Search Report is based on an earlier search prepared by the EPO[3]. This can be a European Search Report, a supplementary European search report or an International Search. The earlier search can relate to a priority application, a parent application (in case that the European search report relates to a divisional) or a new application filed by an entitled person (under R17 EPC).
For European Searches
| Earlier type of application | With/without written opinion (WO) | Full refund | Partial refund |
|---|---|---|---|
| European (from 01.07.2005) | With WO | 100% | 25% |
| PCT (from 01.01.2004)[4] | With WO | 84% | 21% |
| National (such as BE, GB, NL, IT | With WO | 84% | 21% |
| Any type | Without WO | 70% | 17.5% |
For International Searches
| Earlier type of application | With/without written opinion (WO) | Full refund | Partial refund |
|---|---|---|---|
| European | With WO | 100% | 25% |
| PCT | With WO | 100% | 25% |
| National (such as BE, GB, NL, IT | With WO | 100% | 25% |
| Any type | Without WO | 100% | 17.5% |
New form for appeal when filed on paper
As of 24 January 2019, a new form is available for filing an appeal on paper. The form is optional. It has been created to avoid typical mistakes when filing the notice of appeal and ensuring that the minimum requirements for the content of the notice of appeal under Rule 99(1) EPC are met. It is named EPO Form 3002 and can be downloaded as an editable PDF from the website of the EPO.[5]
Appeals may further be filed using online filing services, i.e. online filing (OLF) and EPO Case Management System (CMS, also New online filing), but not via the Web-Form filing[6]. The new form cannot be used when filing the appeal online.
Interviews and Oral Proceedings held as a video-conference[7]
Applicants and their representatives may request that an interview or oral proceedings before an examining division be held as a video-conference. Video-conferences will be conducted using IP technology (SIP, H.323, secure web-based and legacy system). The person who requested the video-conference will be provided with an electronic link allowing him to establish a connection with the EPO when the request is granted. The EPO has ceased to support video-conferencing via ISDN at the end of 2018.
The Notice in the OJ EPO further discusses how to request a video-conference. It is preferably done as early as possible. It is added therein that Oral Proceedings by video-conference are equivalent to Oral Proceedings in the traditional manner on the premises of the EPO. The examining division (or the first examiner) has discretionary power to allow a request for video-conferencing on a case-by-case basis. In case of refusal of a request for video-conferencing, this will not be an appealable decision.
Filing of priority documents
As of 1 December 2018, arrangements for electronic filing of priority documents have been amended[8]. Priority documents for European applications and international applications in the European phase may be filed both via online filing (OLF) and the EPO Case Management System (CMS), in PDF format. However, during the international phase, electronic priority documents should be filed using the ePCT-system.
A requirement is that the priority documents have been digitally signed by the issuing authority and that the signature is accepted by the EPO. This applies for instance to certified electronic priority documents with a digital signature issued by the USPTO and the Brazilian patent office.
As of 1 November 2018[9], the EPO shall include a copy of a priority application in the file of the European patent application, which copy is retrieved via the WIPO Digital Access Service (DAS) using the indicated access code. This will be done upon request of the applicant, and free of charge. This also applies to international application entering the European phase as designated or elected office. However, it does not apply to international applications under the PCT.
If the applicant has not filed a request or if the EPO is unable to retrieve a copy of the priority application via the WIPO DAS, the EPO shall include a copy of the priority application, if said priority application is:
- a European application,
- an international (PCT) application filed with the EPO as receiving office,
- a Chinese patent application or utility model application,
- a Japanese patent application or utility model application,
- a Korean patent application or utility model application,
- a United Stated provisional or non-provisional patent application.
The EPO shall inform the applicant of the inclusion, unless the priority application is a European patent application or a PCT application filed with the EPO as receiving office. If the copy cannot be included in the file, it shall not be deemed filed. The EPO shall inform the applicant in good time and give him the opportunity to file the copy subsequently (R53(1) EPC).
The applicant may request the Office of First Filing to make certified copies of priority applications available to the DAS. The applicant can thereafter request to Offices of Second Filing to retrieve the copies via DAS. Currently, there are 19 offices participating in DAS, including the patent offices of Denmark, Estonia, Finland, The Netherlands, Spain, Sweden and the UK, in addition to those of USA, Korea, China, Europe and Japan.
In view of DAS, the request for grant form (Form 1001) and the form for entry into the European phase (Form 1200) have been updated.[10]
Supplementary issues OJ EPO on the Boards of Appeal and on EQE
A first supplementary issue of the Official Journal was published[11] with information from the Boards of Appeal. In addition to the business distribution scheme, the publication includes an overview of all procedural rules as currently applicable to the Boards, including the Rules of Procedures (for the Boards, the Enlarged Board and the Discliplinary Board) and notices relating to (a.o.) Accelerated Proceedings, conduct of Oral Proceedings, Representation, Filing of Documents.
A further supplementary issue of the Official Journal[12] was published containing the Regulation on the European Qualifying Examination, implementing provisions, instructions to candidates and a decision of the Supervisory Board from 2016. This provides the overview, there are no recent amendments.
EQE Enrolment 2020 (and withdrawal)[13]
Enrolment for the pre-examination on 16 March 2020 is open from 1 February to 30 April 2019. Enrolment will only possible for candidates who have registered commencement of their professional activity before 15 January 2019 (the “compulsory registration”).
Enrolment for the main examination (EQE 2020) from 17 to 19 March 2020 can be done in the period from 1 April to 12 August 2019. Payment of the fees are to be made by credit card or bank transfer. Enrolment must be filed online via the EQE website.
Candidates may withdraw in writing from a paper or any subsequent paper at any time up to the official start of an individual paper examination. If the Examination Secretariat is informed of the withdrawal no later than 30 September 2019, the fees for sitting the respective paper(s) will be refunded. However, the enrolment fee is not refundable. Withdrawal can be done by email, fax or registered mail.
- Decision of the Administrative Council of 12 December 2018, OJ EPO 2019 (January), A3, article 1 and 2. See also the notice hereon provided as A6 in the same issue
- Id. Article 3
- For European Searches, see OJ EPO 2019(1) A4; for International Searches, see OJ EPO 2019(1) A5
- This applies to an international search and a supplementary international search
- https://www.epo.org/applying/forms-fees/forms.html
- Article 3 of the Decision of the President of the European Patent Office dated 9 May 2018 concerning the electronic filing of documents, OJ EPO 2018, A45
- Notice from the EPO dated 15 November 2018, OJ EPO 2018, A96
- Decision of the President dated 15 November 2018, OJ EPO 2018, A93; Notice in relation to same, A94.
- Decision of the President dated 18 October 2018, OJ EPO, A78; Notice in relation to same, A79
- OJ EPO 2018, A80.
- https://www.epo.org/law-practice/legal-texts/official-journal/2019/etc/se1.html
- https://www.epo.org/law-practice/legal-texts/official-journal/2019/etc/se2.html
- OJ EPO 2018, A99 and A108.
