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IP Cases & Commentary – Details

17 January 2012

EPO Rule Changes from 1 April 2012

Catherine Mallalieu

Official Fees

EPO official fees are going up. The increase is generally in the region of 5% to 10%. The new fees apply to payments made on or after 1 April 2012, except in the case of the fee for an international search and any transmittal fee which apply to international applications filed on or after 1 April 2012.

Change to Grant Procedure

There is some good news. A reminder that, as we previously reported , Rule 71 EPC is being amended and new Rule 71a EPC introduced to avoid the potential need to file multiple claim translations when negotiating amendments to the claims proposed by the EPO at the grant stage.

As you know, before a patent proceeds to grant the EPO issues a communication under Rule 71(3) EPC attaching the text which it intends to grant. Currently where the applicant does not agree with the text intended for grant, the applicant is still required file claim translations of the requested amendments, and pay associated grant fees, even though the EPO may not agree to the amendments. This can be particularly frustrating where the applicant is correcting changes made by the EPO of its own volition.

For communications under Rule 71(3) EPC attaching the text intended for grant which are dispatched after 1 April 2012, if an applicant does not agree with the text, they can submit reasoned amendments and/or corrections of the text. This submission is to be filed without claim translations and payment of associated grant fees. If the EPO agrees to the changes, a further communication under Rule 71(3) EPC will be issued setting a new four month time limit within which to file translations of the agreed claims and pay the required fees. If the EPO disagrees with the proposed changes then, as is currently the case, it will resume examination proceedings.

It is important to note that the new procedure does not change the way in which the EPO will consider amendments filed at the Rule 71(3) EPC stage, namely that in deciding on whether to admit such amendments, it believes that a balance must be struck between the applicant's interest in obtaining a patent which is valid in all of the designated states and the EPO's interest in bringing the examination procedure to a close by the issuance of a decision to grant the patent. At the Rule 71(3) EPC stage of the proceedings, the substantive examination has already been completed and therefore the EPO normally only admits amendments which it thinks do not appreciably delay the preparations for grant of the patent.

Useful links

EPO Adminstrative Council Decision - Rule 71 EPC

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Related Resources

EPO Rule Changes to Grant Procedure - Rule 71 EPC

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