IP-Fälle und Artikel

EPO approach to handwritten amendments

The European Patent Office (EPO) has not accepted hand-written amendments since 01 January 2014. Replacement patent application documents such as amended claims and description pages have instead had to be filed in typed-up form.

Clearly when filing replacement claims or description pages during written proceedings, the preparation and submission of typed amendments is relatively straightforward. There is usually time to obtain or prepare a digital version of the specification and to review typed amendments before they are filed at the EPO. When replacement documents have to be filed during oral proceedings, however, the preparation of typed pages can be problematic.

Firstly there is an inevitable time pressure on a European patent attorney to prepare the amendments. The Examining or Opposition Division holding the oral proceedings will agree a time period for the amendments to be prepared and whilst there is some flexibility in this time period, there is still limited time for the amendments to be prepared and reviewed before filing.

Secondly the European patent attorney must have an editable version of the pending description and claims. This might require, for example, an Adobe PDF file to be converted into editable form or typed into a Microsoft Word document, which could result in typographical or formatting errors in the specification. In view of the time pressure when preparing amendments, errors such as these have the potential to go unnoticed.

Finally the typed amendments must be prepared and printed using the EPO computer facilities. There is, however, a limited number of computers at the EPO. There is also always a risk of technical problems with the computer and/or printing facilities.

Amended Rule 82(2) EPC

Thankfully, however, the EPO has amended Rule 82(2) EPC with the Decision of the Administrative Counsel of 14 October 2015, CA/D 9/15, so that it includes the following sentence: "Where, in oral proceedings, decisions under Article 106, paragraph 2, or Article 111, paragraph 2, have been based on documents not complying with Rule 49, paragraph 8, the proprietor of the patent shall be invited to file the amended text in a form compliant with Rule 49, paragraph 8, within the three-month period."

From 01 May 2016 it will therefore be possible to file handwritten amendments during oral proceedings. Where a patent is maintained on the basis of these amendments, the patent proprietor will then receive an invite to file a typed version of the amendments. This typed version must be filed within a three-month period (which is set by the Communication from the Opposition Division inviting the patent proprietor to pay the republication fee and file a translation of any amended claims in the official languages of the EPO other than the language of the proceedings).