Article 71

EUROPEAN PATENT OFFICE

Information from the EPO

Notice from the European Patent Office dated 23 June 2022 concerning the correction of erroneous filings in proceedings before the EPO

I. Introduction

1. New Rule 56a EPC will enter into force on 1 November 2022.1 It aligns the EPC with Rule 20.5bis PCT and allows the correction of erroneously filed application documents in EPC procedures for applications filed on or after that date. It will thus offer an equivalent to the PCT procedure, allowing the EPO to fully apply the PCT provision.

2. Currently, the EPC allows only the adding of missing parts of the description and/or missing drawings under Rule 56 EPC. The Legal Board of Appeal interprets this provision narrowly. In proceedings under the PCT, applicants also have the possibility to correct an erroneously filed element (description or claims) or part of the description, claims or drawings (including all drawings) contained in an international application under Rule 20.5bis PCT. However, since this provision is partially incompatible with the current legal framework under the EPC, the EPO does not apply it fully at present in proceedings before the EPO as receiving and designated/elected Office.2

3. Following the entry into force of new Rule 56a EPC on 1 November 2022, the incompatibility of Rule 20.5bis PCT with the EPC legal framework will cease. The EPO has thus notified the International Bureau that the new provision will be fully applicable at the EPO from that date.3

4. In alignment with the PCT procedure, the EPC provision on missing parts is also amended with effect from 1 November 2022. Under amended Rule 56(3) EPC, the relevant priority right must be claimed on the date of filing if it is to serve as a basis for adding missing parts without changing the date of filing. If a declaration of priority is added thereafter under Rule 52(2) EPC it cannot serve as a basis for such a correction. This amendment will thus contribute to legal certainty.

5. This notice gives information on the new procedures under Rule 56a EPC and under Rule 20.5bis PCT that are applicable to European and international applications respectively filed on or after 1 November 2022.4

II. Procedure under new Rule 56a EPC

6. This provision implements the procedure for according a filing date under Article 80 EPC. The application with the disclosure determined under Rule 56a EPC will be considered the application as filed and will form the basis for the proceedings and for any amendments under Article 123(2) EPC. It has essentially the same structure as current Rule 56 EPC but includes a further provision in its paragraph 2.

Procedure before the Receiving Section

7. New Rule 56a(1) EPC (invitation to file correct documents): If, during examination on filing, the EPO establishes that the description, claims or drawings (or parts of them) appear to have been filed erroneously, it will invite the applicant to file the correct documents. Correct application documents must be filed within two months of that invitation or of an invitation under Rule 56(1) EPC. As is the case under current Rule 56 EPC, the applicant may not invoke the omission of such an invitation. However, even applicants who have not been so invited may file correct application documents under Rule 56a EPC within two months of the filing date.

8. Whether documents were erroneously filed will depend only on the applicant's statement as to what was intended. No further evidence will be required by the EPO in this regard.

9. New Rule 56a(3) EPC (correction with change of filing date): This provision will allow applicants to correct the description, claims and drawings (or parts of them) after the filing date if they were erroneously filed, provided the correct documents are filed within two months of the date of filing or of the invitation (see point 7 above). The erroneously filed application documents will be deemed not to have been filed and the correct documents will be added. The filing date will be shifted to the date of receipt of the correct application documents (or parts). The EPO will inform the applicant accordingly. It is noted that a change of the filing date may result in a loss of the right to priority. The benefit of this procedure is that applicants do not need to file a second application and pay the corresponding fees if they realise that they erroneously filed incorrect application documents.

10. New Rule 56a(4) EPC (correction without change of filing date): If the correct application documents (or parts) filed within the period under Rule 56a(3) EPC are completely contained in the priority document, this provision will allow applicants to maintain the initial filing date when adding those documents (or parts). For the sake of legal certainty, the priority right must have been claimed on the date of filing. Further formal requirements must be met: where applicable, a copy of the earlier application and, if the earlier application is not in an official EPO language, a translation thereof into one of those languages must be filed in addition to an indication as to where the correct application documents or parts are completely contained in the earlier application and, where applicable, in the translation. If all requirements are fulfilled, the initial filing date will be maintained, the correct documents will be added to the application as filed and the erroneously filed application documents will remain in the application as filed. The EPO will inform the applicant accordingly. The erroneously filed documents may only be removed by amending the application during the grant proceedings and subject to Article 123(2) EPC.

11. New Rule 56a(5) and (7) EPC (withdrawal of corrections): In cases where the filing date has been shifted, the applicant may withdraw the corrections in order to maintain the initial filing date. The redating of the application and any filing of the correct documents or parts will then be deemed not to have been made. The erroneously filed documents or parts will be considered part of the application as filed. The EPO will inform the applicant accordingly.

12. New Rule 56a(2) EPC (same-day corrections): This provision formalises the EPO practice where corrections of application documents are received on or before the date of filing. It allows the correction and exchange of application documents on or before the date of filing without changing the filing date. As is the EPO's current practice, applicants will thus not need to file a second application and pay the corresponding fees if they realise on the filing date (or earlier if the filing date cannot yet be accorded) that they erroneously filed incorrect application documents.

13. New Rule 56a(8) EPC (further search fee): The EPO invites the applicant to pay a further search fee in cases where it has already begun to draw up the search report before the applicant files correct application documents. In cases where the EPO detects the error during the examination on filing and sends a corresponding invitation to the applicant, the search will not start before the procedure is finalised. For reasons of legal certainty, the moment when the search starts is reflected in the file and, after publication of the application, in the European Patent Register. Before publication, the EPO will provide the applicant with this information upon request. It can also be accessed in the electronic file via the MyFiles service or MyEPO Portfolio. If the time limit for paying the fee is missed, the application will be deemed to be withdrawn and further processing is available.

Publication of the application and file inspection

14. The application will be published under Article 93 EPC with the filing date and the application documents determined to be part of the application as filed under new Rule 56a EPC if the procedure is finalised in time. If, for instance, correct documents are added under Rule 56a(4) EPC without changing the filing date, the publication will include the correct documents or parts and the erroneously filed application documents.

15. All application documents and parts that have been filed with the EPO are part of the file, irrespective of whether or not they are considered to form part of the application as filed. As such they will be open to file inspection from publication of the application (Article 128(4) EPC, Rule 144 EPC). Upon reasoned request of the applicant, erroneously filed documents which are not considered to form part of the application as filed may be excluded from file inspection.5

Procedure during search and examination

16. Search and examination will be based on the filing date and the application documents established during the procedure under Rule 56a EPC. These documents are considered the documents as originally filed within the meaning of Article 123(2) EPC. In cases where erroneously filed documents and correct documents are part of the application as filed (i.e. in the case of corrections without change of the filing date under Rule 56a(4) EPC), the usual procedures will be applied, including Rules 63 or 64 EPC as the case may be.

17. In cases where the applicant paid a further search fee under Rule 56a(8) EPC, the search will be completed on the basis of the filing date and on the basis of the application documents established under Rule 56a EPC. These will also form the basis of the search report and any written opinion issued by the EPO.

III. Full application of Rule 20.5bis PCT

Procedure before the EPO as receiving Office

18. The notification of incompatibility did not have an impact on the procedure before the EPO as receiving Office where no incorporation by reference was requested by the applicant (Rule 20.5bis(b) or (c) PCT). Therefore, the processing of these requests will remain unchanged after the withdrawal of the notification of incompatibility:

a. If the correct element or part is furnished by the applicant on or before the date on which the international filing date is accorded (Rule 20.5bis(b) PCT), the wrong element or part will be replaced with the correct one and the international filing date will be the date on which all the requirements of Article 11(1) PCT are fulfilled.

b. If the correct element or part is furnished by the applicant after the date on which the international filing date has been accorded and no incorporation by reference is requested (Rule 20.5bis(c) PCT), the wrong element or part will be replaced with the correct one and the international filing date will be shifted to the date on which the correct element or part was received unless the applicant requests that it be disregarded (Rule 20.5bis(e) PCT).

19. By contrast, for international applications filed on or after 1 November 2022,6 the EPO as receiving Office will start processing requests for incorporation by reference of the correct element or part under Rule 20.5bis(d) PCT. If the requirements under Rules 20.6(b) and 4.18 PCT are fulfilled, the correct element or part will be considered to have been contained in the purported international application on the date on which one or more elements referred to in Article 11(1)(iii) PCT were first received by the receiving Office without shifting the international filing date. It is noted that in this case the wrong element or part will also remain in the application.

Procedure before the EPO as International Searching Authority and International Preliminary Examining Authority

20. The notification of incompatibility had no impact on the activity of the EPO as International Searching Authority and International Preliminary Examining Authority. Therefore, the procedures applicable in cases where the international application was corrected by the receiving Office under Rule 20.5bis PCT will remain unchanged after the withdrawal of the notification of incompatibility.7

Procedure before the EPO as designated or elected Office

21. The notification of incompatibility did not have an impact on procedures under Rule 20.5bis(b) or (c) PCT. Therefore corrections accepted by the receiving Office during the international phase under one of these provisions are already effective today in proceedings before the EPO as designated or elected Office. This will continue to be the case after the withdrawal of the notification of incompatibility.

22. Incorporations by reference by the receiving Office under Rule 20.5bis(d) PCT, i.e. without changing the filing date, are currently not effective in proceedings before the EPO as designated/elected Office due to the notification of incompatibility. In such cases, the EPO establishes the filing date and the application documents on which the processing before the EPO as designated/elected Office will be based in accordance with a dedicated procedure.8

23. For international applications filed between 1 July 2020 and 31 October 2022, these principles will remain applicable, irrespective of the date of entry into the European phase. For international applications filed on or after 1 November 2022, the EPO will fully apply Rule 20.5bis PCT. This means that incorporation by reference by the receiving Office under Rule 20.5bis(d) PCT, i.e. without changing the filing date, will also be effective before the EPO as designated or elected Office for international applications filed on or after 1 November 2022.