Article 93

EUROPEAN PATENT OFFICE

Information from the EPO

Decision of the Vice-President Legal and International Affairs of the European Patent Office (Directorate-General 5) dated 10 October 2022 concerning the conditions for participating in phase 2 of the MyEPO Portfolio pilot project

In accordance with Article 12 of the decision of the President of the European Patent Office (EPO) dated 11 March 2015 concerning the pilot project to introduce new means of electronic communication in EPO proceedings (OJ EPO 2015, A28), a second phase of the pilot will be launched to gather feedback on features developed since the general release of MyEPO Portfolio in June 2022. Pilot participants will receive notifications in the Mailbox and may submit procedural requests, perform other procedural acts and file accompanying documents in the web-based online service MyEPO Portfolio, subject to the applicable regulations of the European Patent Convention (EPC) and Patent Cooperation Treaty (PCT), the decision of the President of the European Patent Office dated 11 May 2022 concerning the web-based online service MyEPO Portfolio (OJ EPO 2022, A51) and the provisions of this decision.

Article 1

Scope

(1) The piloted features comprise the following:

(a) electronic notification for international agents and applicants via the Mailbox, as specified in Article 4 below,

(b) electronic filing, as specified in Article 5 below,

(c) in due course and upon further announcement, additional functionalities.

(2) The provisions of the decision of the President of the European Patent Office dated 11 May 2022 concerning the web-based online service MyEPO Portfolio (OJ EPO 2022, A51) apply, mutatis mutandis, unless otherwise provided.

(3) Pilot participants will have access to all the features of MyEPO Portfolio, i.e. both to piloted features and already released features, subject to the limitations set out in Article 1(4) of the decision of the President of the European Patent Office dated 11 May 2022 concerning the web-based online service MyEPO Portfolio (OJ EPO 2022, A51), unless otherwise provided.

Article 2

Starting date

Phase 2 of the pilot project starts on 1 November 2022.

Article 3

Conditions for participation

Any user with a smart card who activates or links to an activated Mailbox may participate in phase 2 of the pilot project upon registration and invitation by the EPO.1

Article 4

Electronic notification for international agents and applicants

(1) During phase 2 of the pilot project, international agents and applicants who do not have their residence or principal place of business in an EPC contracting state but are entitled to represent before the EPO in PCT international phase proceedings may choose to receive notifications electronically (Articles 27(7) and 49 PCT, Article 127 EPC as well as Rule 89bis.2 PCT and Section 709 (b-bis) of the Administrative Instructions under the PCT respectively). This applies to all communications from the EPO in the international phase where it acts as (S)ISA or IPEA.

(2) Electronic notification is effected by electronic communication to the Mailbox. Pilot participants may access the Mailbox via MyEPO Portfolio or the existing Mailbox service.

(3) Article 9 of the decision of the President of the European Patent Office (EPO) dated 11 March 2015 concerning the pilot project to introduce new means of electronic communication in EPO proceedings (OJ EPO 2015, A28) applies mutatis mutandis to electronic notification to the Mailbox and access via MyEPO Portfolio.

Article 5

Electronic filing

(1) Participants in phase 2 of the pilot project, other than those specified in Article 4, can perform the following acts or submit the following requests in addition to those already available in MyEPO Portfolio:

•  reply to the extended European search report (Rule 70a EPC)
•  reply to an invitation about subject-matter for search (Rules 62a or 63 EPC)
•  in due course and upon further announcement, requests relating to the administration of the list of professional representatives before the European Patent Office and further contact details of professional representatives.

(2) In due course and upon further announcement on the EPO website or in the Official Journal, additional tasks and actions may be added.

(3) Only documents, procedural acts or requests relating to the procedures under paragraphs 1 and 2 may be filed as part of the pilot project. Other documents, procedural acts or requests will be deemed not to have been received.

(4) Article 3, paragraphs 1 to 5, 9 and 10, of the decision of the President of the European Patent Office dated 11 May 2022 concerning the web-based online service MyEPO Portfolio (OJ EPO 2022, A51) apply, mutatis mutandis.

Article 6

Existing methods of filing, notification and file inspection

The pilot project is provided without prejudice to the existing methods of filing, electronic notification and file inspection.

Article 7

Changes to the pilot project

Upon further announcement, the EPO may change the starting date of phase 2 of the pilot project, limit its scope, or otherwise change it, in whole or in part, as well as discontinue it. Any such announcement will be made on the EPO website.

Done at Munich, 10 October 2022

Christoph Ernst

Vice-President Legal and International Affairs of the European Patent Office

(Directorate-General 5)