10 November 2010

EPO Rule Changes to Grant Procedure - Rule 71 EPC

EPO Rule Changes to Grant Procedure - Rule 71 EPC

On receipt of a communication from the EPO that it intends to grant a patent, the applicant is informed of the text which is intended for grant. If the text is acceptable to the applicant, claims translated into the required official languages need to be filed and the fees for grant and printing need to be paid.

However, where the applicant does not agree with the text intended for grant, the present EPO procedure requires the applicant to prepare and file claim translations of the amended text, even though the EPO may not agree to the amendments. Where there is a disagreement regarding the text, the current procedure therefore can lead to the unnecessary preparation of multiple translations. New amendments to Rule 71 EPC and the introduction of new Rule 71a EPC are intended to prevent this.

Under the new procedure, if the applicant does not agree with the proposed text, reasoned amendments or corrections of the text may be requested under new Rule 71(6) EPC. If the EPO gives its consent to these amendments, a further communication under Rule 71(3) EPC will be issued confirming the newly agreed text for grant. This further communication will set a new four month time limit within which to file translations of the agreed claims and pay the required fees.

If the EPO do not give their consent to the amendments, they shall resume examination. In connection with this, new Rule 71a(2) EPC explicitly allows for the Examining Division to resume examination at any time prior to the decision to grant.

It is to be noted that new Rule 71(6) EPC only permits “reasoned amendments or corrections”. No further guidance has been given by the EPO as to what may or may not be a “reasoned amendment" and so it may be that the EPO will be examining requests for amendment at this stage of the procedure more closely.

New Rules 71 and 71a EPC come into force on 1 April 2012. They shall apply to European patent applications in respect of which a communication under existing Rule 71(3) EPC has not yet been despatched by 1 April 2012.