Article 94

EUROPEAN PATENT OFFICE

Information from the EPO

Notice from the European Patent Office dated 10 October 2022 concerning phase 2 of the MyEPO Portfolio pilot project

I. Introduction

1. Under the Strategic Plan 2023 the EPO is working towards a digital transformation that will deliver new online tools to better address user needs. In line with that goal, after a seven-month pilot phase involving 180 participants from industry and patent attorney firms, the EPO launched MyEPO Portfolio in June 2022. MyEPO Portfolio is a secure, web-based online service that allows the inspection of documents in the electronic file, provides access to electronic notifications in EPO proceedings (Mailbox) and offers a contemporary, simplified approach to making procedural submissions.

2. Users require an EPO smart card for access to MyEPO Portfolio and for authentication to perform certain actions.

3. Building on the first phase of the pilot project and its success triggering the general release of MyEPO Portfolio this June, a range of new functionalities and services has been developed. Now phase 2 of the pilot project is being launched to gather user feedback on these added functionalities and services before their general release (see decision of the Vice-President Legal and International Affairs (Directorate-General 5) of the European Patent Office dated 10 October 2022).

4. This notice provides further information on phase 2 of the pilot project.

II. Services included in phase 2

5. A variety of services and functionalities will be piloted in phase 2, in addition to those already available in MyEPO Portfolio (see OJ EPO 2022, A51, A52, and the information on MyEPO Portfolio on the EPO website).

Electronic notification for international agents and applicants

6. Almost all EPO correspondence in European proceedings can be notified electronically to the Mailbox. The decisions, summonses, notices and communications which can be notified electronically are listed on the EPO website.

7. Electronic notification occurs by transmission to the Mailbox. The date of transmission is the date indicated on the document, provided that it was accessible in the Mailbox by that date. 

8. Thus far, electronic notification has been limited to professional representatives and applicants having their principal place of business in an EPC contracting state as well as legal practitioners under Article 134(8) EPC. During phase 2 of the pilot project, electronic notification will be available to participating international agents and international 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. For registered pilot participants, this new functionality means that all communications from the EPO acting as (S)ISA or IPEA in the international phase will be notified via the Mailbox.1 These communications can be accessed via MyEPO Portfolio or the existing Mailbox service.

9. The availability of communications in ePCT is unaffected by the use of the Mailbox.

Electronic filing: new tasks

10. With MyEPO Portfolio, users can perform procedural acts in reply to a communication from the EPO within the prescribed period ("tasks") and file certain procedural requests ("actions") together with accompanying documents. During phase 2 of the pilot, a number of new tasks and actions will be added. More specifically, in addition to the reply to a communication under Rule 71(3) EPC and the reply to a communication under Article 94(3) EPC, the new tasks and actions added are the following: reply to the extended European search report (Rule 70a EPC); reply to an invitation about subject-matter for search (Rules 62a or 63 EPC); and, in due course and upon further announcement, requests relating to the administration of the list of professional representatives.

11. These new tasks and actions will be available to pilot participants who are European professional representatives and legal practitioners under Article 134(8) EPC. Delegation of access is possible to e.g. paralegals whose smart card is associated with the same company. Other filing tools and options remain available for all users.

12. Communications from the EPO to be replied to within a prescribed period will be both notified via Mailbox and reflected in a list indicating the tasks to be performed (Pending tasks area). The final date for completing a specific task will be indicated as a courtesy service. This date will reflect the rules for calculating periods under the EPC and the closure days of the EPO filing offices under Rule 134(1) EPC.

13. In the exceptional situation where a task is missing in the tasks list but the corresponding communication from the EPO has been validly notified to the Mailbox, pilot participants should file the reply using one of the existing filing tools to avoid any loss of rights.

14. Tasks are automatically removed from the tasks list once completed or, depending on the case, once a notice of loss of rights under Rule 112(1) EPC is issued in the case of failure to complete a task by expiry of the applicable period. Any subsequent, complementary submissions to be made during the period for completing a procedural act must be filed using other means.

15. When replying to a communication from the EPO, users will be able to perform any acts and submit any requests directly linked to that reply. For example, if replying to an extended European search report, users will be offered a procedural option applicable to their situation, reflecting whether or not the request for examination was filed before the European search report was transmitted to the applicant, and whether or not the search opinion is positive or negative. The reply to an invitation under Rules 62a or 63 EPC will allow users to submit an indication of the subject-matter to be searched.

16. If users fail to observe a period for reply and further processing is available as a legal remedy, they will be able to immediately file a request for further processing and/or for a decision under Rule 112(2) EPC. Once the corresponding notice of loss of rights has been issued and notified via Mailbox, a new task will be generated ("react to the noting of loss of rights") and can be completed by requesting further processing.

17. When performing any tasks or actions, pilot participants can upload accompanying documents as attachments, containing e.g. grounds in support of a request or amendments to the application documents. "PDF" and "TIFF" are the admissible document formats for those attachments.

18. At the final step of the filing process, pilot participants will be invited to confirm the filing on the basis of an automatically generated submission package reproducing the electronic filing in its entirety (i.e. a request or reply to an EPO communication together with any accompanying document). Upon submission, the filing will immediately be added to the file and made available for public inspection in accordance with Article 128 EPC.

19. During the pilot project, fees can be paid via one of the existing online tools (Central Fee Payment, Online Filing and Online Filing 2.0). If a procedural action requires the payment of a fee, pilot participants will be informed accordingly. As an intermediate solution, pilot participants will see information about fees that are due and will have the option to open Central Fee Payment to pay the fees. Back in MyEPO Portfolio, pilot participants will see that the overview of fees due has been updated. For further information regarding Central Fee Payment, see the notice from the European Patent Office dated 19 July 2022 (EPO OJ 2022, A81).

20. Professional representatives or legal practitioners may delegate the preparation of any task or action to employees of the same company, as set out in the user guide. Submissions prepared by those employees will then be reviewed, signed and submitted by the appointed representative.

21. In all other respects, unless otherwise provided, piloted tasks function as described in the decision of the President dated 11 May 2022 concerning the web-based online service MyEPO Portfolio (EPO OJ 2022, A51) and the corresponding notice from the EPO (EPO OJ 2022, A52).

Electronic filing: management of professional representatives' data

22. In due course and upon further announcement, the possibility to file requests relating to the administration of the list of professional representatives will be made available to European professional representatives participating in the pilot. They will then be able to:

•  request entry on the list of professional representatives before the European Patent Office
•  request deletion from the list of professional representatives before the European Patent Office
•  request changes to professional representatives' personal data.

III. Other EPO services

23. Pilot participants may continue to use the MyFiles2 and existing Mailbox3 services for the duration of the project. EPO online filing services4 are unaffected by the pilot.

IV. Duration of the pilot and next steps

24. Phase 2 of the pilot project will commence on 1 November 2022 and will last until 30 June 2023. The EPO will use the feedback received from the pilot participants to further improve the services offered in MyEPO Portfolio. Phase 2 of the pilot may be extended, its scope changed, or certain features removed. Pilot participants will be informed of such changes in advance. These changes will also be announced on the EPO website.