A number of changes are being introduced into the grant process for European patents, which will come into force on for all applications where the Rule 71(3) communication (the notice of allowance) is issued on or after 1 April 2012.
Currently, when the Examining Division of the European Patent Office (EPO) decides that a patent should be granted on an application, a communication pursuant to Rule 71(3) EPC is issued to the applicant along with a copy of the text in which the Examining Division intends to grant the patent. This communication invites the applicant to approve the text, pay the fees for grant and publication and to file translations of the allowed claims into the remaining two official languages of the EPO (eg where the application is in English, translations of the claims into French and German are required).
If the applicant does not agree with the proposed text, for example because it has been amended by the Examining Division prior to the Rule 71(3) communication being issued, then they may object and either request reversal of the amendments or suggest an alternative. However, they must still pay the grant and publication fees and file translations of the claims within the four month deadline, even though there is no guarantee that their amendments will be allowed. This can result in multiple sets of translations being filed before the application is granted, which is both a waste of time and expensive for the applicant.
In order to address this issue, Rule 71 EPC is being amended and a new rule, Rule 71a EPC, is being introduced.
Under the new rules, the applicant will have a number of options for how to proceed on receipt of the Rule 71(3) communication. These are:
1) To pay the required fees and file the necessary translations within the four month deadline. This action will be taken as approval of the text intended for grant.
2) To object to the text for grant. If the applicant does this, he will not have to pay the fees or file the translations within the four month time period. However, where all of the following criteria are met, this action will result in a refusal of the application:
- The Examining Division did not propose any amendments or corrections.
- The Rule 71(3) communication was not based on an auxiliary request.
- The applicant does not file any amendments or corrections with his objection.
3) To respond by filing amendments, corrections and/or arguments. Again, it will not be necessary to pay the publication or grant fees or to file translations of the claims. If the amendments are accepted by the Examining Division then a new Rule 71(3) communication will be issued. If the Examining Division does not agree with the amendments then examination of the application will be reopened.
These rule changes should not alter the way in which amendments proposed by the applicant following the Rule 71(3) EPC communication are considered by the EPO. A balance is struck between the applicant's interest in obtaining a valid patent, and the EPO's interest in bringing the examination process to a conclusion. As such, amendments will normally only be accepted which are not likely to appreciably delay the grant of the patent.
These welcome changes should provide greater flexibility in the grant process, and a greater ability to negotiate over proposed amendments to the allowed text of a patent application.
20 February 2012