Report of the Online Communications Committee (OCC)

J. Gray, (GB), Chair

Introduction

The main task of the Online Communications Committee is to cooperate with the EPO in the areas of digital information processing & communications, including for example the online filing systems. The emphasis from our side is on data security and integrity, legal certainty, minimization of accidental losses of rights, and ease of use.

epi members can help in this work by bringing experiences and/or concerns to our attention, via the email address OCC@patentepi.org, or directly with any OCC member.

Changes in EPO systems are continuing, but not always on the predicted timescale, and sometimes with shifts in direction. Guiding principles adopted by OCC in the past include: a preference that the online systems should implement faithfully the EPC and not impose additional formal requirements; that rules applied by the computer and/or human systems of the EPO should be transparent and accessible to users, not only officers; that system design and documentation should take into account who are the real "hands-on" users in members' offices, and not assume that every interaction will be by the responsible and highly qualified attorney.

Pilot programme for OOXML (.docx) filing

A first pilot phase for filing specifications and other documents in OOXML format took place in 2017, but was terminated, after encountering a number of issues. A second phase of pilot has been due to start at any moment, but, at the time of writing (May 2018) is still delayed. In the meantime, the Schedule of Fees has already been amended to provide discounts for users of the new format, but these will not enter into force until the DOCX filing service is technically ready.

Features of the OOXML filing scheme expected in the finished version are:

New filing fee structure:
- €250 paper
- €120 PDF
- €90 docx
Templates will not be required
Unicode fonts will be required
OLE embedded objects allowed
Reduced grant fee if all subsequently filed documents are filed in this format
- €100 reduction for docx compliant cases from 1/7/18 ("carrot")
- €100 increase for non-compliant cases from 1/7/19 ("stick")
This reduced grant fee will also be available for applications pending already. For example, we expect that, for a case where a Rule 71 (3) EPC communication has already been received, filing the claims translations in XML is enough to secure the discount at the grant stage. Exact conditions to get grant fee reduction/avoid surcharges still need to be clarified.

The more epi members participate in this pilot, the better.

More information is at https://www.epo.org/applying/online-services/improving/docx-filing.html

Electronic notification from EPO to applicants (Mailbox, Myfiles, etc.)

The EPO recognises, that if users are expected to use electronic filing and, soon, to file DOCX to assist EPO, it would be fair if the EPO issues similar editable content in its own communications and publications back to users. It was felt that the current electronic Mailbox works well for those who use it, but with flaws and limitations. At a SACEPO-EPP meeting in January, the EPO shared its vision for the future of "eNotifications":

Communications can be notified electronically to all parties
- Applicant, Proprietor, Opponent, Appellant
- Professional representative, Association
- Legal practitioner, Employee
Communications can be notified electronically for all procedures
- EP, Euro-PCT, UNIP
- Opposition, Appeals
- PCT-RO, PCT-ISA, PCT-IPEA
Both companies and individuals can have several eNotification inboxes
Customers can decide per application to receive eNotifications

New Online Filing System - Closure of eOLF

The majority of EPAs use eOLF for online filing, and eOLF can also be used for a wide range of national and PCT procedures in many member states. The online filing system "CMS" has been tried and available for some years, but a new system, provisionally titled "online filing 2.0" is being prepared for launch.

This "new online filing" system should be in testing soon, to go live early in 2019. Once the EPO judges that the CMS/new online filing has sufficient functionality, a transition ("sunset") period of two years will be triggered, after which eOLF will no longer be supported. Conversely, users will not want to switch to the new system, until it does everything reliably, that eOLF currently does. Bearing in mind the number of IT systems and training requirements associated with a transition to a new online filing system in all the firms and offices of epi members, OCC considers that two years is not a long time.

OCC will be consulting to determine the minimum functionality to be provided by the new online system, before the sunset period on eOLF should be triggered. - Do you currently rely on OLF for national and PCT procedures, or only EPO procedures? - Does your national IPO provide adequate online services separate from eOLF? - Is your national office supporting implementation of its procedures through the new online filing system?

National offices should be urged to integrate with CMS/Online Filing 2.0 as a matter of priority. Also of value would be for national offices to integrate with the Federated Register (for those offices that have not yet done so).

Rescue/emergency filing - closure of EPO fax filing

It has long been the aim of the EPO to eliminate fax machines from its operation. It has equally long been the position of epi that fax filing should be maintained as an option, especially for "emergency" or "rescue" situations, in case of local computer/Internet failures. OCC does not consider it productive to pretend that fax filing is the only solution possible for "rescue" situations, in perpetuity. In fact, fax communications can be difficult to arrange in the modern age of telephony over Internet. However, the EPO clearly does not yet offer alternate solutions that could replace fax as a backup. For example, the Web Form Filing not only depends on the Internet, but does not cover several time-critical procedures before the EPO. Furthermore, the EPO "does not practise what it preaches". In many procedures and situations, the EPO invites facsimile as a preferred means of communication, and EPO officers recommend facsimile as a backup, precisely in cases where online filing encounters difficulty.

OCC will work on this topic to define the criteria by which "rescue" mechanisms can be judged, before any reconsideration of the proposal to close fax filing. In the meantime, OCC understands that proposals to close fax filing facilities will not be brought forward again, until this contradictory situation has been eliminated (see Electronic Notification as a topic, above).