Report of Online Communications Committee

J. Gray (GB), Chair

OCC members continue to work on the topics summarised in epi Information 02/2018. On 2 October 2018, a strong contingent of OCC members attended the annual meeting with EPO customer support and IT personnel, chaired by John Bambridge. The potential of the meeting was hampered by the fact that none of the new systems which we had anticipated being in use or in trial by now have yet been launched (new online filing, XML filing, for example).

OCC observes that EPO systems, while established and stable, create increasing difficulty and risks for users in modern computing and business environments. Also, while EPO online filing systems have a good track record, we are very concerned that EPO and users should not be complacent:

  • In recent months, the USPTO experienced an 8-day interruption in its online systems availability, which was mitigated only by extensive use of both facsimile and the legal provisions that allow filing date to be secured by a suitable deposit with the US Federal Postal Service.

  • Facsimile is the only backup for several time-critical procedures at the EPO. Future EPO systems will be web-based, which reduces the burden on the user side, but may bring new risk of outages due, for example, to cyber attacks.

  • The International Bureau at WIPO has identified hazards in the use of facsimile as a backup, particularly as telephony systems move to Internet protocol. (The transition of business users and telecom providers to VoIP or "voice over Internet Protocol" brings with it the need for FoIP - fax over Internet Protocol).

In other words, long-standing concerns about the usability and safety of existing systems are being joined by new concerns. OCC observes that investment and effort over recent years has been directed primarily to improving the systems internally and patent information systems. These are good developments, but they must be followed swiftly by investment in user systems.

Furthermore, the strategic review initiated by the incoming EPO President, Mr Campinos, presents a risk that long-awaited improvements will be dropped or further delayed. It also presents an opportunity for user to assert new priorities, where the EPO's current plans do not meet user needs.

The Strategic Plan is due to be presented to the Administrative Council in June 2019. On a proposal from OCC, epi Council at C85 Helsinki authorised the President to writes urgently to the President of the EPO, to make the following points (a draft letter including these points and explanatory detail is provided in the annex to this report):

  1. Electronic notification from EPO to applicants (Mailbox, Myfiles, etc.)
    • epi hopes that the Strategic Plan will promote rapid implementation of the vision which EPO has previously shared, as mentioned below.
  2. Online Filing - New Online Filing System
    • For some years now, a "new online filing" system has been under development but has been delayed several times. The Strategic Plan process should not be a cause of further delay.
  3. Online Filing - Closure of "old" eOLF
    • EPO has stated that the established eOLF system will be turned off two years after the EPO judges that all EP and PCT functionality and one national filing function is provided in the new system. However, closing eOLF without ensuring that a new system offers the same existing national functionality is considered unacceptable by epi. We urge EPO to find a more satisfactory arrangement for transition.
  4. Rescue/emergency filing - fax filing and alternatives
    • EPO does not yet offer adequate solutions as a backup to the normal online filing. The current safeguard is fax, but this is becoming inconvenient and unreliable due to the adoption of Internet telephony.
    • New solutions are urgently required to avoid loss of rights in cases of urgency, and cases of local or general technical difficulty. Fax filing must be preserved until satisfactory alternatives are in place.
    • Emergency filing solutions should not impose formal requirements. The obligation for patent offices to afford a filing date as a result of reasonable formal requirements, and the possibility for applicants to correct formal errors after filing, is a fundamental principle of the EPC.
  5. Authentication and Access - Smart card limitations
    • The dependence of EPO online systems on smart card infrastructure issue brings inconvenience to users and increasing risk of loss of rights. New (additional) means of authentication should be adopted without delay.
  6. OOXML (.docx) filing
    • epi supports the aims of this project, subject to the lessons learned from the first pilot stage. The Strategic Plan should promote its early conclusion.

Videoconference for Oral Proceedings

In October, with assistance from the Secretariat, OCC conducted an online survey of members' experiences of using videoconference for oral proceedings. Over 500 members kindly participated, and the findings will be shared in a separate report.

Electronic Druckexemplar (eDrex) issues - SACEPO-EPP

The new president of the EPO has acted quickly on one matter which was raised by his staff in his early consultations with them: simplification of the eDrex tool, by which examiners prepare the amended text for grant of a patent. I and two other OCC members were able to attend a quickly-convened extraordinary meeting of the SACEPO Working Group on the Electronic Patent Process (SACEPO-EPP).
We hope this meeting has been very productive.

Copies of presentations are in the papers for Council C85 Helsinki. On practical issues, improvements in the manner of presenting amendments were shown, which aim to simplify the presentation of amended pages. We expect that members will be pleased at the change from this style:

to this:

which is already being implemented. I and other users also begged the EPO to ensure that the clean version of the text is included with the Rule 71(3) communication, and not only the marked-up version. Many users do not realise that there is a clean version available online when they are looking at the marked-up version. Other users complained that the clean version becomes available only a day after communication, disrupting their processing.

The meeting explored other practical issues. For example, it was highlighted that the EPO currently considers the marked-up version of the text as the authoritative text proposed for grant. On the other hand, when applicants submit amendments, the clean version is the authoritative text, and the marked-up version is for information only. The EPO will consider whether to adopt this alternative approach.

EPO Director Heli Pihljamaa presented the legal issues around correction of errors in granted patents. She emphasised that since G1/10, the EPO has lost almost all freedom to assist applicants to rectify errors that occur at the grant stage. As shown by recent appeal decisions, rights are being lost by applicants, either because there was no way to remedy an error, or because the wrong remedy was selected. Applicants must check closely all changes that are marked as changes in the margins and headers of the eDrex pages. If there is an error in these parts of the text proposed for grant, including complete missing pages, as well as minor slips, and it is not spotted by the applicant/representative, there may be no remedy, no matter how obvious the error.

Particular risks arise if the applicant requests amendments and waives the right to a further Rule 71(3) communication. EPO is working to eliminate errors in its processing, but asked SACEPO-EPP members how they can communicate to representatives the importance of checking, and the correct remedies in case of errors.

This matter is outside OCC's remit, and has been passed to EPPC for further monitoring/action.