Pages 58-63

C. PROCEDURE BEFORE SEARCH, EXAMINING AND OPPOSITION DIVISIONS

C.1 Grant procedure in general

Decision of the President of the European Patent Office dated 11 March 2015 concerning the pilot project to introduce new means of electronic communication in EPO proceedings

OJ EPO 2015, A28

The President of the European Patent Office,

having regard to Articles 10(2)(i) and 119 and Rules 2, 67(1), 68(2), 73(2), 87, 127(1), 147(2), 150(2) and 152 EPC, Article 5, 6, 7 Rules relating to Fees and to Articles 17(2) and 18(2) and Rules 44, 80.6, 89bis.1 and 2 PCT,

has decided as follows:

General provisions

Article 1

Scope of application

(1) The European Patent Office (EPO) is continuing to develop its IT systems, the aim being to automate procedures, make the filing of documents and communication with users more effective and secure, and facilitate co-operation between the EPO and users. To that end, it is conducting a pilot project in which it will progressively make available new means for the electronic communication of patent applications, other documents, notifications and further information.

(2) Within the framework of the pilot project, the EPO reserves the right to change, in whole or in part, limit or discontinue the means of electronic communication made available on the basis of the present decision.

(3) In accordance with the present decision, the pilot project will cover in particular the following areas:

(a) how documents are filed in proceedings under the EPC, and the filing of international patent applications and other documents in proceedings under the Patent Cooperation Treaty (PCT);

(b) the data formats and aids available for filing;

(c) notification to the parties to proceedings;

(d) co-operation with such parties and other users of the means made available by the EPO;

(e) the publication of European patent applications and European patents;

(f) file inspection;

(g) payment of fees.

Article 2

Participation in the pilot project

(1) The pilot project is open to all parties to proceedings and users who fulfil the specific conditions for taking part and have informed the EPO that they are willing to do so in respect of one or more of the means of electronic communication made available on the basis of the present decision.

(2) In the event of suspected abuse or unauthorised use, the EPO reserves the right to refuse access, in individual cases, to the means of electronic communication made available on the basis of the present decision.

Article 3

Formal provisions

The formal provisions to be complied with result from the means of electronic communication made available and their accompanying documentation.

Article 4

Logs

Procedurally relevant communication will be logged. The logs may be drawn upon where relevant; they will then go into the public part of the file.

Article 5

Technical faults

(1) If faults in the means of electronic communication give rise to adverse legal consequences in proceedings, the EPO will put the parties concerned in the position, within the framework of the legal provisions in force, in which they would have been if the said consequences had not arisen.

(2) The EPO may invite parties to proceedings to repeat procedural acts within a time limit set by the EPO; the possibility of performing procedural acts otherwise than by using means of electronic communication on the basis of the present decision remains unaffected.

(3) A party to proceedings cannot invoke paragraph 1 if

(a) the technical fault concerned the filing of a patent application, he could have realised that the fault had occurred, and he did not file the application in another form without delay;

(b) he became aware of the faults which caused the adverse legal consequences, and did not inform the EPO about them without delay; or

(c) he did not repeat the procedural act despite an invitation under paragraph 2.

Individual procedural acts

Article 6

Filing of documents in proceedings under the EPC

In so far as the EPO provides the relevant means of electronic communication, they may be used in proceedings under the EPC to file documents in the form of structured data or in another form.

Article 7

Filing of international patent applications and other documents

In so far as the EPO provides the relevant means of electronic communication, they may be used to file international applications and other documents within the meaning of Rule 89bis.1 and 2 PCT in the form of structured data or in another form.

Article 8

Conversion of documents

Documents not filed in electronic form may be converted by the EPO and added in electronic form to the electronic file.

Article 9

Electronic notification

(1) In so far as the EPO provides the relevant means of electronic communication, notification may occur in electronic form to an activated Mailbox (electronic notification).

(2) Electronic notification comprises the decisions, summonses, notices and communications contained in a list published in accordance with Article 13.

(3) Electronic notification is effected by electronic communication to the Mailbox.

(4) Transmission within the meaning of Rule 127(2) EPC is deemed to have occurred on the date of the document, provided the document has been made available in the Mailbox by that date.

(5) Electronic notification in proceedings under the PCT is governed by the provisions of the PCT.

(6) In case of electronic notification, no paper copies will be notified in parallel.

(7) In so far as notification is effected in the form of structured data, the Office will make conversion tools available to the parties to the proceedings.

(8) Paragraphs 1 to 7 apply mutatis mutandis to the electronic delivery of notices and communications not subject to notification.

Article 10

Creation, maintenance and processing of files

Notwithstanding Article 1 of the decision dated 12 July 2007 concerning use of the PHOENIX electronic file system,1 files or parts thereof relating to European patent applications and to international applications for which the EPO is acting under the Patent Cooperation Treaty (PCT) may also be created, maintained and processed in other electronic systems of the EPO.

Article 11

Determining the number of pages in an application

If the documents are transmitted in the form of structured data, the number of pages in a European patent application is determined, in accordance with the formal provisions laid down in the Implementing Regulations, using electronic means made available by the Office to the parties to the proceedings.

Implementation of the decision

Article 12

Authorisation to issue supplementary rules

The Vice-President Directorate-General 5 is authorised to approve the use of new means of electronic communication made available on the basis of the present decision and to issue supplementary provisions, including the specific conditions for participation (Article 2), and rules which diverge from the present decision in so far as they are required by changes in test operation.

Article 13

Publication

The approval of new means of electronic communication made available on the basis of this decision, the issue of supplementary provisions, including documentation concerning the individual means of electronic communication and the conditions for taking part in the pilot project, will be made public on the EPO website or in another suitable form.

Final provisions

Article 14

Previous decisions superseded

When this decision enters into force, the decision of the President of the EPO dated 4 July 2012 concerning the pilot project to introduce new technical means of communication in EPO proceedings (OJ EPO 2012, 486) will cease to have effect.

Article 15

Entry into force

This decision will enter into force on 1 April 2015.

Done at Munich, 11 March 2015

Benoît BATTISTELLI

President