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Legal changes to the EPC to support the digital transformation of the EPO

The Administrative Council of the EPO passed a package of rules on 13th October 2022 to support the ongoing digital transformation in the patent grant procedure at the EPO and strengthen alignment with the PCT.

The changes to the EPC rules relate to: (i) presentation requirements of documents, (ii) transmittal of documents cited in the search report, and (iii) notification and time limit calculations.

Presentation requirements of documents

Rules 46, 49 and 50 EPC implement certain aspects of Article 78 EPC, which defines the requirements of a European patent application. Rule 46 EPC defines the form of the drawings. Rule 49 EPC defines the presentation requirements which all documents making up the application must meet. According to Rule 50(1) EPC these requirements apply equally to documents replacing the application documents. Rule 50(2) EPC provides formal requirements for documents other than application documents. Rules 57(i) and 82(2) EPC govern the examination of compliance with these provisions.

Under the revised rules, the power to set the presentation requirements is delegated to the President of the EPO. This provides for a flexible system that ensures quick and easy adjustment of these provisions to developments in the EPO’s digital systems.

The decision of the President on the presentation of application and other documents does not contain any changes to the presentation requirements of documents. It restates the current deleted requirements, from the Implementing Regulations, in a consolidated manner.

Changes to the requirements will be made after discussion at the international level (in the PCT context), with EPC contracting states and with users, and will enter into force by way of a revised decision of the President.

The revised rules and decision of the President restating the current requirements will enter into force on 1 February 2023.

Transmittal of documents cited in the search report

To modernise the process of transmitting copies of any document cited in the European Search Report to the applicant, the EPO plans to make citations available for download from a central web-based platform on-demand.

To enable this to be implemented, amended Rule 65 EPC is split into two sentences. The first sentence governs the transmittal of the search report, which, together with the search opinion, will continue to be transmitted to the applicant electronically to the Mailbox or by post. The new second sentence specifies that the cited documents will be made available.

This amendment will enter into force on 1 February 2023.

Since the solution for digital access to cited documents has not yet been designed, the entry into force of the amended provision will initially not result in a change to the EPO’s practice. The new solution will be announced separately.

Notification and time limit calculations

According to the current rules there is a legal fiction by which notification of a communication from the EPO is deemed to occur ten days after the date of the communication.

However, amended Rules 126(2) and 127(2) EPC introduce a new notification fiction, according to which EPO communications will be deemed to be delivered on the date shown on the communication. Deadlines will therefore be calculated from the date shown on the communication.

To provide a safeguard in case there are delays in the transmission of documents, the burden of proving that the communication was delivered on time will lie with the EPO. If the EPO cannot show that a particular document reached its addressee within seven days of the date of the document, the period for reply would be extended by the number of days by which the seven days was exceeded.

The changes will take effect from 1 November 2023. They will apply to documents notified by postal services or electronic means on or after this date.

Dedicated information on the new notification fiction, the topic of burden of proof in the case of notification disputes, the application of the new safeguard, as well as the resulting computation of periods will be published in March 2023.

If you have any questions on this topic, please contact Andy Cloughley at andycloughley@mskpatents.com.

Article written by Romi Korotana.