Update on EPC Practice

M. Nollen (BE), European Patent AttorneyM. Nollen (BE), European Patent Attorney

Following overview is an update based on information in the Official Journal (OJ EPO), editions 3/2019, 4/2019, 5/2019 and 6/2019. The information is given for the sake of attention. Readers should rely on the information in the OJ EPO. The published updates relate to financial matters, to international collaboration and to other matters

I Updates on Financial Matters

1.1 Notice relating to refunds

The EPO has announced a new refund procedure that was entered into force on 1 April 2019. It herein distinguishes between refund to a deposit account, and refund to a bank account. Refund by means of a cheque was discontinued.

1.1.1 Procedure for refund to deposit accounts

The procedure introduces the use of “refund instructions”. This is a document which indicates to which deposit account any refund is to be made. In the absence of such refund instructions, the EPO will use the deposit account of the representative. Refund instructions are preferably sent to the EPO in electronically processable format (XML). Currently, the use hereof is still facultative, but it will become obligatory in the near future.

One option enabled herewith is that a different deposit account for refund (i.e. of a third party) may be specified than the deposit account of the representative. One may think of the deposit account of the applicant rather than that of the representative. It is reminded and recommended that the refund instructions need amendment upon change of representative or a transfer of rights. When filing a revised refund instruction together with a request for such change or transfer, the revised refund instruction will only be used after the EPO has processed the change of representative or transfer of rights. Special attention is needed for a PCT application: the change of representative needs to be communicated to the PCT, but the revised refund instruction is to be sent to the EPO. In case of withdrawal of a representative, any refund instructions given shall be deleted.

The EPO will continue to send a Communication (‘refund advice’) providing the details of the refund.

1.1.2 Refund to a bank account

If there are neither refund instructions, nor the deposit account of a representative can be used, the EPO will provide a refund to a bank account. The applicant should indicate the details of the bank account.

Thereto, the EPO will send an additional communication containing a refund code. To claim the refund, the party will then need to go to https://epo.org/fee-payment-service/en/login and register with an email address and password. The party can then login and enter the application number, the code and the details of a bank account. Please note that associating multiple email addresses with one account will not be possible.

1.2 Amendment of Automatic Debiting

By decision of the President of 22 May 2019, the Annex A.1 (AAD) and A.2 to the Arrangements for Deposit Accounts (ADA) have been amended. It specifically relates to point 6.2 of the AAD and point II(m) and (n) of Annex A.2.

The background of the amendment is a change to the preliminary examination under the PCT. This change allows that preliminary examination may start earlier than upon expiration of the time limit (Rule 54bis 1(a) PCT: typically 22 months after priority). As a consequence, the AAD is now changed so that the handling fee (Rule 57 PCT) and the fee for preliminary examination (Rule 58 PCT, Rule 158(2) EPC) will be paid when the demand is filed, rather than upon expiration of the time limit.

1.3 Changes to the Fee Schedule

The EPO Fee schedule was amended per 1/4/2019. The fees for registration of transfers, licenses etc, under R22(2) and R23 EPC is now 100 euro. The search fee for a PCT-type search is 1205 euro for first filings and 1890 euro for all other cases. The fee for late furnishing of a sequence listing under Rule 13 ter PCT is 230 euro.

II International cooperation and document availabiltity

2.1 Extended Participation of EPO in WIPO’s Digital Access System (DAS)

As reported earlier, the WIPO has launched a system for automatic exchange of priority documents between patent offices. The patent office can therein fulfil two roles: as depositing office and as accessing office. The EPO has decided to extend its participation to be active as depositing office for PCT applications. Hence, its participation is:

  • as depositing and accessing office for European patent applications
  • as accessing office for international applications entering into the European phase before the EPO as designated office (OJ EPO 2018, A78); and
  • as depositing office for international applications (PCT) when acting in its capacity as receiving Office (RO/EP).

In order to enable applicants to make use of the DAS system, the EPO as depositing office will generate a DAS access code. For (EP- and PCT-) applications filed via Online Filing, CMS, the applicant will receive the DAS access code in a notification added to the acknowledgement of receipt. For EP and PCT applications filed otherwise (on paper, filed via Web-Form Filing or via national offices), a separate notification will be sent for the DAS access code. This DAS access code is to be mentioned on the filing form of the subsequent application.

If an applicant uses the DAS access code, the priority document will be included in the file. The fee for preparing the priority document (by the EPO) will no longer be due, if the applicant indicates the DAS access code correctly on the filing form of the subsequent application claiming priority.

2.2 Copy of search results of foreign priority documents (Switzerland)

As of 1 August 2019, there is no longer need to provide search results of priority applications from Switzerland to the EPO, as the EPO will do it by itself. This is thus an exemption under Rule 141(2) EPC). This applies to all cases for which no invitation under Rule 70b(1) was sent on that day.
The same already applied to several other countries and to priority applications searched by the EPO (such as for Belgium and the Netherlands). The list of other countries is now: Austria (AT), Switzerland (CH), Denmark (DK), Spain (ES), Japan (JP), Korea (KR), United Kingdom (UK), and United States (US).

2.3 PPH programme with Australia

The EPO has extended its collaboration on PPH-programmes with Australia and has therein also specified how one may use a positive opinion or granted patent from the Australian Patent Office at the EPO.

The EPO sets thereto a set of rules. It starts by specifying the applications for which PPH could be requested, namely those wherein all claims must sufficiently correspond to the patentable/allowable claims filed with IP-office of Australia. Furthermore, a PPH request may only be submitted for applications for which substantive examination has not yet started.

Then several documents are to be provided with the PPH-request, including the use of a specific form, a declaration that there is sufficient correspondence and any matters on the contents (prosecution history, cited documents etc), as far as not available to the EPO, or alternatively a list with all cited documents.

If there would be any deficiency, the applicant gets one opportunity for correction. If the request is accepted, the application will be examined in accelerated manner, as under the PACE-programme. The notice does not state how and whether the EPO will take account of the positive patentability opinion from abroad.

III Other updates

3.1 Notification by registered letter

Art 126(1) EPC was amended by the Administrative Council on 28 March 2019 into: “All notifications by postal services shall be by registered letter”. The amendment will enter into force on 1 November 2019. The amendment resides therein that the use of advices of delivery will be discontinued. It is observed that the EPO will start with the IT-implementation prior to 1 November, so that certain changes may become visible prior to 1 November 2019.

The EPO will send by registered letter:

  1. Decisions incurring period for appeal or a petition for review;
  2. Summonses, and
  3. Notifications from the Boards of Appeal (decisions, summons, communications drawing attention to formal deficiencies or noting a loss of right, etc).

An “acknowledgment of receipt” will be included with the notification by registered letter, as in current practice. The receiving party is requested to send this back to the EPO immediately upon receipt.

Notices and Communications for which no time limit is reckoned, or which do not require notification under the EPC or by order of the EPO President, will continue to be sent by ordinary mail.

3.2 Staying of proceedings in G1/19 and G3/19

The President of the EPO decided to stay proceedings in relevant cases following the referrals in G1/19 and G3/19 to the Enlarged Board. The decisions were made in April and became effective immediately. The stay will only apply to cases, of which the outcome of the proceedings depends entirely on how the Enlarged Board answers the points of law referred to it. It is the Examining or Opposition Division that will decide on the stay of proceedings.

For Referral G 1/19 ("Patentability of computer-implemented simulations") the relevant cases are those in which the inventive step of computer-implemented simulations is at stake. More particularly, the relevant question at stake will be whether or not a computer-implemented simulation of a technical system or process can be considered to produce a technical effect which goes beyond the simulation's implementation on a computer.

For Referral G3/19 (“Essentially biological process”), the relevant cases are those in which the claimed subject-matter encompasses a plant or animal exclusively obtained by means of an essentially biological process. Patent applications or patents claiming other plant-related inventions will not be affected.

3.3 New Rules of Procedure for the Boards of Appeal

The new Rules of Procedure for the Boards of Appeal have been published and will come into force on 1 January 2020. The contents hereof are discussed elsewhere. According to the Transitional Provisions, the new stricter articles 12 and 13 (setting the framework for the appeal and particularly on the submission of documents and requests) will gradually come into force. More precisely the old version of art 12(4) will continue to apply to any grounds of appeal filed before 2020 and any reply thereto. The old version of art 13 will apply, where the summons to oral proceedings have been notified before 2020.