Pages 194-200

C. PROCEDURE BEFORE SEARCH, EXAMINING AND OPPOSITION DIVISIONS

C.4 Examination

Notice from the European Patent Office dated 8 June 2015 concerning the possibility to waive the right to a further communication under Rule 71(3) EPC

OJ EPO 2015, A52

Rule 71 EPC was amended with effect from 1 April 2012 so as to introduce an additional procedural step for cases where the applicant requests amendments or corrections in response to a communication under Rule 71(3) EPC. In such cases, agreement on the text intended for grant must be established by issuing a further communication under Rule 71(3) EPC as provided for by Rule 71(6) EPC.

With a view to increasing procedural efficiency, applicants are now being given the option of expressly waiving the right to receive such a further communication. Provided that the conditions set out below (see point II) are fulfilled and the Examining Division has no objections to the amendments or corrections, then the Division is deemed to have consented to the waiver. If that is the case, the Office will not send a further communication under Rule 71(3) EPC and will proceed with the issuance of the decision to grant the European patent. This new option does not affect the three existing ways of reacting to a communication pursuant to Rule 71(3) EPC as set out in Rule 71(3) to (7) EPC.

The present notice contains information about this new option, and is thus intended to supplement the information in the notice from the EPO dated 13 December 2011 concerning amended Rule 71 and new Rule 71a EPC (OJ EPO 2012, 52).

I. New procedural option for reacting to a communication under Rule 71(3) EPC

1. According to the current procedure under Rule 71(3) to (7) EPC, in response to a communication under Rule 71(3) EPC, applicants may:1

(a) approve the text intended for grant

(b) disapprove the text intended for grant

(c) file amendments or corrections.

2. In the situation under (c), if it has no objections to the amendments or corrections filed, the Examining Division will normally issue a new communication under Rule 71(3) EPC; otherwise it will resume the examination proceedings (see Rule 71(6) EPC). Applicants are now being offered an additional option, which is to explicitly indicate that they wish to waive their right to receive a further communication under Rule 71(3) EPC. Provided that the conditions set out below are fulfilled within the non-extendable period given in the communication under Rule 71(3) EPC, the Examining Division will be deemed to have consented to the waiver.

II. How to waive the right to receive a further communication under Rule 71(3) EPC

3. In order for the Examining Division to be deemed to have consented to the waiving of the right to receive a further communication under Rule 71(3) EPC, applicants must fulfil a number of conditions within the non-extendable four-month period under the Rule 71(3) EPC communication. They must:

• Expressly indicate that they wish to waive their right to receive a further communication when they reply to the communication under Rule 71(3) EPC. No special form is needed.
• File a translation of the claims in the two official languages of the EPO other than the language of the proceedings.
• Pay the fee for grant and publishing (for payments by automatic debiting procedure, please note the information under point 16).
• Pay the claims fees in respect of the sixteenth and each subsequent claim, unless they have already been paid under Rule 45 or Rule 162 EPC (for payments by automatic debiting procedure, please note the information under point 16).
• Identify the amendments or corrections and, where applicable, indicate the basis for them in the application as filed (Rule 137(4) EPC), and file the relevant pages of the documents making up the Rule 71(3) EPC communication (Druckexemplar) which contain the amendments or corrections.

4. If, within the four-month period, the applicant pays the fee for grant and publishing and, where applicable, the claims fees in respect of the sixteenth and each subsequent claim, and files translations of the claims in the two official languages of the European Patent Office other than the language of the proceedings, he is deemed to have approved the grant of the patent as amended or corrected and to have verified the bibliographic data.2

5. Any waiver expressed in response to a Rule 71(3) EPC communication is only effective in respect of the following Rule 71(3) EPC communication. Therefore, if a waiver is, for any reason, not deemed to have been consented to, a new waiver declaration would be necessary in respect of any subsequent Rule 71(3) EPC communication.

6. Applicants' attention is drawn to the crucial importance of the final stage of the grant proceedings, in particular to the fact that once the patent has been granted, errors remaining in the text of the patent as approved cannot be corrected under Rule 140 EPC (see G 1/10, OJ EPO 2013, 194 and Guidelines H-VI). Considering the opportunity given to the applicant to check the text of the patent before approving it (see Article 97(1) and Rule 71(3), (4) and (5) EPC) and thus to ensure that it is correct, and in view of the fiction laid down in Rule 71(5) EPC, the responsibility for any errors remaining in that text after grant should be the applicant's alone. For corrections of errors in publication and formatting/ editing errors, reference is made to the information contained in the Guidelines H-VI, 4.

7. A request for retraction of a waiver of the right to get a further communication under Rule 71(3) EPC or to have further amendments or corrections considered once the applicant has indicated his wish to waive his right to the communication may be considered by the Examining Division only up to the moment the decision to grant the European patent is handed over to the EPO's internal postal service (see G 12/91, OJ EPO 1994, 285).

III. Consent to the applicant's waiver of the right to receive a further communication under Rule 71(3) EPC

8. If all the formal requirements are fulfilled and the Examining Division has no objection to the amendments or corrections requested by the applicant – because they do not require resumption of the substantive examination proceedings (e.g. they relate to mis-spelled words, use of incorrect words, incorrect reference drawings or the like) – then the Examining Division is deemed to have consented to the waiver and no further communication under Rule 71(3) EPC will be sent. No further amendments (not even relating to capital letters or language errors) may be made by the Examining Division on its own initiative, even if it can reasonably expect the applicant to accept them.

9. EPO Form 2004W ("Information under Rule 71(3) EPC") is then published in the European Patent Register, with the aim of informing the applicant and the public of the text in which the Examining Division intends to grant the patent and of the related bibliographic data, as approved by the applicant. The decision to grant the European patent is then issued, provided that renewal fees and any additional fees already due have been paid.

10. If a waiver is not deemed to have been consented to by the Examining Division, either because the formal requirements (as to the fees to be paid or the translations of the claims to be filed) have not been fulfilled or because the amendments or corrections cannot be allowed, the applicant will either be informed that the examination procedure is being resumed or, depending on the circumstances of the case, will be sent a further communication under Rule 71(3) EPC.3 Where the Rule 71(3) EPC communication was based on an auxiliary request and the applicant replies by requesting that a grant be based on a higher request, the waiver may not be consented to, and examination will have to be resumed.

11. Where a further Rule 71(3) EPC communication is subsequently issued, the applicant is required to express approval of the grant of the patent as amended or corrected (Rule 71a(1) EPC and Guidelines C-V, 6.2) within the four-month period (e.g. by approving the text and verifying the bibliographic data, by confirming that grant proceedings can continue with the documents on file and/or by stating which translations of the claims already on file are to be used). With regard to the payment of fees, attention is drawn to the procedure for the crediting or refunding of amounts of fees already paid, as explained in the Guidelines C-V, 4.2, A-X, 10.2.7 and 11.

IV. Grant of the patent

12. Once all the requirements set out in Rule 71a(1) EPC are met, the decision to grant a European patent is issued, provided that the renewal fees and any additional fees already due have been paid.

13. If a renewal fee becomes due after notification of the Rule 71(3) EPC communication/publication of the information under Rule 71(3) EPC but before the next possible date for publication of the mention of the grant of the European patent, pursuant to Rule 71a(4) EPC the decision to grant will not be issued and the mention of the grant will not be published until the renewal fee has been paid. The applicant will be informed accordingly. If the renewal fee or any additional fee is not paid in time, the application will be deemed to be withdrawn.

14. In the rare case that examination was accelerated to such an extent that the communication/information under Rule 71(3) EPC is issued/published before the designation fee becomes due, pursuant to Rule 71a(3) EPC the decision to grant will not be issued and the mention of the grant of the patent will not be published until the designation fee has been paid. The applicant will be informed accordingly.

V. Notes concerning fee payments

15. When making payments, please quote the relevant fee code(s).

16. Automatic debiting procedure

If a waiver has been expressed in response to a Rule 71(3) EPC communication, the fee for grant, including the fee for publication/printing (Art. 2(2) RFees), and any additional claims fees due under Rule 71(4) EPC must be paid separately by another means of payment allowed under the RFees (see point 12 AAD and Re point 12 AAD in Annex A.2 to the ADA). These fees will not be debited automatically. If the designation fee(s) become(s) due as set out in Rule 71a(3) EPC and/or a renewal fee becomes due as set out in Rule 71a(4) EPC, these should also be paid separately by another permitted method of payment in order not to delay the publication of the mention of the grant. The same applies to the payment of extension fees. For further details see the Arrangements for the automatic debiting procedure (AAD) and accompanying information from the EPO concerning the automatic debiting procedure (Annexes A.1 and A.2 to the Arrangements for deposit accounts (ADA) in supplementary publication 3, OJ EPO 2015).

17. Fee amounts

Fees must be paid in the amounts actually due on the date of payment. The latest version of the schedule of fees and expenses is published as a supplementary publication to the Official Journal of the EPO and is also available on the EPO website (www.epo.org/schedule-of-fees), where you can view, download and search for individual fee amounts, both current and previous.

18. Payments by cheque delivered or sent direct to the EPO are no longer accepted (see OJ EPO 2007, 626).

VI. Availability of the possibility to waive the right to receive a further Rule 71(3) EPC communication

The possibility to expressly waive the right to receive a further Rule 71(3) EPC communication will be available as of 1 July 2015.