Article 68

EUROPEAN PATENT OFFICE

Information from the EPO

Notice from the European Patent Office dated 2 July 2024 concerning a change of practice in access to patent literature documents cited in search and examination proceedings

By decision of 13 October 2022,1 the Administrative Council of the European Patent Organisation adopted amendments to Rule 65 EPC concerning the transmittal of documents cited in search reports. The aim was to remove any legal restrictions to digitalisation, thereby supporting the development of technological solutions to enable a more sustainable patent grant procedure by reducing the use of paper.2

Driven by the goal of establishing a modern and fully digitalised patent granting process, the EPO, through Mailbox in MyEPO Portfolio, offers improved access to communications during EP, UP and PCT proceedings. Mailbox now covers 99% of communications issued in proceedings before the EPO and is available to all users, including 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 act as representatives before the EPO in PCT international phase proceedings. As a result, almost 75% of all communications are notified electronically. Despite these developments, the volume of communications notified via postal services (i.e. number of pages), particularly during the search stage, remains high (copies of patent documents notified by post account for about six million pages per year).

Considering its commitment to become a more sustainable organisation, the continuous improvement of MyEPO Portfolio and easy access to patent literature documents on Espacenet, the EPO has decided to stop sending paper copies of cited patent literature in search and examination proceedings as detailed below. Instead, applicants and their representatives will use Espacenet to access digital copies of these documents.3 Non-patent literature as well as translations of cited patent literature will still be sent on paper.

MyEPO Portfolio users will continue to receive all types of documents electronically in their Mailbox, in both EPC and PCT proceedings. As a result, the checkbox in Form PCT/ISA/210 indicating that the international search report is accompanied by a copy of each cited prior art will remain selected by default. This also reflects the fact that copies of non-patent literature documents will continue to be sent by post to those users who have not yet selected Mailbox as a notification method.

This new practice will apply to patent documents cited in (supplementary) European search reports, (supplementary) international search reports, international preliminary examination reports and in communications from examining divisions (communications under Article 94(3), Rule 71(3) and Rule 164(2)(b) EPC). During the international phase, in line with the PCT legal framework, applicants will still be able to request paper copies of the cited patent documents.4

Search reports, search opinions, international preliminary examination reports and communications from examining divisions will continue to be transmitted to applicants electronically to Mailbox or by post.

Access to cited patent documents is guaranteed via Espacenet, which provides free access to over 150 million patent documents worldwide. It has a user-friendly interface available in almost all European languages and enables users to retrieve cited patent literature documents by entering the relevant publication number in the corresponding search field. Specific training on how to use Espacenet and a pocket guide are available on the EPO website.5 Moreover, once a patent application is published, any cited documents available in Espacenet will also appear as links in the European Patent Register.

The change of practice will apply to European and international search reports, international preliminary examination reports and communications from examination divisions sent as of 1 October 2024. It is a major step towards digitalisation and also, in view of the significant reduction in paper consumption, towards environmental responsibility.