New option to streamline grant procedure at the EPO
The EPO has recently introduced a new option to simplify, in some cases, the process of getting to a granted patent from the point at which a patent application is allowable.
When the EPO’s examining division decides that a patent application is ready to grant, it sends a letter called a “notification of intention to grant” or “Rule 71(3) communication” to the applicant. This letter contains the full text of the patent proposed for grant by the EPO. This text is the same as the last text proposed by the applicant during examination, but often with changes made by the EPO examiner.
In response to the Rule 71(3) communication, the applicant may approve the text for grant, in which case the applicant files translations of the claims into French and German and pays the required fees. The grant procedure is then straightforward. However, in some cases the applicant may wish to amend the text for grant proposed by the EPO. In this situation, the applicant must file its proposed amendments to the EPO’s text in response to the Rule 71(3) communication.
New procedure when the text for grant is amended by the applicant
Under the previous system, the EPO would either approve the amendments proposed by the applicant, in which case a new Rule 71(3) communication would be sent, or reject them, in which case examination would be re-opened. Under the new system these possibilities are unchanged, but the applicant can also opt to streamline the procedure by waiving its right to receive a new Rule 71(3) communication in the event that the EPO agrees with their changes. This means that the amended application can go straight to grant in the same way as if the applicant had simply approved the text unchanged.
The new procedure will be helpful in cases where the applicant wishes to propose uncontroversial amendments to the text for grant, in which case receiving another Rule 71(3) communication would serve no purpose. Reducing the number of communications sent in the grant process will both reduce the cost of the process and reduce the time to grant, potentially by several months.
How to use the waiver
In order to take advantage of the new procedure, the applicant must not only expressly waive the right to another Rule 71(3) communication in its response, but must also file claim translations and pay any outstanding fees by the deadline set in the original Rule 71(3) communication. There is a small risk associated with this, since if the EPO does not approve the changes and further amendments need to be made then the original translation cost could be wasted, at least in part. However, we would still recommend using the new waiver whenever the desired changes to the text for grant are relatively minor and are unlikely to attract objections.