Wednesday, July 1, 2015

From 1 July 2015 - possibility to waive the right to receive a further Rule 71(3) EPC communication (intention to grant)

When the Examining Division is willing to grant a European patent application, it sends an 'intention to grant' (Rule 71(3) communication) with the text intended for grant ('Druckexemplar'). Currently, applicants may respond by:
  1. approving the text intended for grant,
  2. disapproving the text intended for grant, or
  3. disapproving the text currently intended for grant and filing amendments or corrections.
In the situation under 3, the Examining Division reviews the amendments or corrections and if it has no objections a second intention to grant is sent, such that the text on which the decision to grant will be based is unambiguously defined by a single document. Otherwise, it will resume the examination proceedings.
Since the introduction of this procedure in April 2012 the EPO has found that the issuance of a further intention to grant is not always efficient. In an effort to increase procedural efficiency it has introduced a new option for applicants: waiving the right to receive such a further intention to grant.

The waiver

The new option is designed to speed up the procedural steps in the granting process in cases where applicants are filing relatively simple amendments or corrections, that would not lead to resumption of the substantive examination proceedings (e.g. if they relate to mis-spelled words, use of incorrect words, incorrect reference drawings or the like).
The waiver makes it possible for the Examining Division to immediately consent to the amendments or corrections, without sending a new intention to grant. Instead, the Examining Division publishes a new EPO Form 2004W in the European Patent Register informing the applicant and the public of the allowance of the amendments or corrections. Subsequently the decision to grant the European patent is issued, and about one month later the mention of the grant is published in the European Patent Bulletin.

How to waive?

Applicants must fulfill a number of conditions within the non-extendable four-month period to reply to an intention to grant:
  1. expressly indicate that they wish to waive their right to receive a further intention to grant. There is no special form for this, it may just be a sentence in the letter accompanying the amendments or corrections;
  2. identify the amendments or corrections and, where applicable, indicate the basis for them in the application as filed and file the relevant pages of the text intended for grant ("Druckexemplar") containing the amendments and corrections made. Best practice would probably be to file a complete clean copy (such that the decision to grant will be based on a single document) and a marked-up copy (identifying the amendments). Unfortunately, the Druckexemplar is only available from the EPO Register as an image pdf-file (see FAQ), which makes its editing a hassle, especially if it contained amendments by the Examining Division such that the applicant cannot rely on its own file;
  3. file a translation of the amended or corrected claims in the two official languages of the EPO other than the procedural language; and
  4. pay the following fees:
    • fee for grant & publishing, and
    • claims fees from the 16th claim onwards, if applicable.
Note with regard to payment of fees: in case of a waiver, automatic debiting cannot be used, since fees will only be debited on the last day of the period for payments, which conflicts with the purpose of the waiver. This also applies to any renewal fee or designation fee (and extension and validation fee) that needs to be paid before grant.

A waiver may be retracted: this can be done up to the moment the decision to grant the European patent is handed over to the EPO's internal postal service. If it is necessary to retract a waiver, it would be wise to call the EPO to check whether or not the decision has already been handed over.

Consent from the Examining Division

If all formal requirements are fulfilled and the Examining Division consents to the amendments or corrections, the approved text is published as described above and the decision to grant is issued.

 A waiver is not consented to if:
  • not all formal requirements are met (point 3 and 4 above), or
  • the amendments or corrections cannot be allowed by the Examining Division, or
  • the applicant's response corresponds to maintaining a higher ranking request while the first intention to grant was based on an auxiliary request.
Then, either substantive examination is resumed, or a new intention to grant is sent (e.g., if the Examining Division wants to make minor amendments) which requires the applicant's response, depending on the situation.

More information about this new procedural option can be found in the EPO Official Journal of June 2015 (OJ 2015, A52). It indicates that the possibility to waive the right to receive a further Rule 71(3) EPC communication will be available as of 1 July 2015. We assume that this means the date of submission of the waiver is the relevant date, and not, e.g., the date of the first Rule 71(3) communication, nor the expiry as such of the four-month period to respond.

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