IP Cases & Articles

Digital transformation of the EPO: legal changes and new online services

The Covid-19 pandemic has dramatically accelerated moves towards digitalised working practices at the European Patent Office (EPO). Most prominent perhaps, at least to European patent attorneys, has been the adoption of oral proceedings by videoconference.

Read our “Guide to ViCo at the EPO” which includes a brief checklist of actions before proceedings and on the day.

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Additionally, the EPO has digitalised its internal workflows, switched to issuing electronic grant certificates (as of 01 April 2022) and work continues to eventually transition to a fully digital patent grant process.

To this end, we understand that the EPO is planning several noteworthy legal changes and new online services to adopt to changes in working practices under the umbrella of “digital transformation”.

Presentation requirements of documents

The Implementing Regulations governing the presentation of documents and those governing the examination of said requirements reflect the days of paper-based procedures.

To allow more legislative flexibility in the future, the EPO plans to remove certain provisions of the Implementing Regulations relating to the presentation requirements and instead delegate these to the President of the EPO. Changes to the presentation requirements can then simply be effected by decisions issued by the EPO President.

The EPO plans to delete Rule 46 EPC (governing the form of drawings) and to amend Rules 49 and 50 (governing the form of application and subsequently filed documents) to enable the EPO President to determine these requirements. Minor changes to further rules will be made for consistency.

These changes are expected to come into force in November 2022.

We understand that the first decision of the President following the changes is intended to simply re-state the deleted matter from the Implementing Regulations. Thus, while future changes may be implemented more quickly and flexibly, the presently proposed changes are largely foundational and should not lead to any dramatic practical changes for the time being.

Nonetheless, one of the eventual consequences of these changes is that it may become possible to file and publish colour drawings at the EPO. However, we understand that this may have to await the EPO adapting its software systems to allow for end-to-end processing, as well as potential international consultation and alignment.

Transmittal of search reports

The EPO is required to transmit copies of any document cited in the European Search Report to the applicant. While the EPO’s digital mailbox service is widely used, a huge quantity of paper is still sent through the post each year.

Moreover, non-written prior art such as video clips present additional challenges.

To modernise this process, the EPO plans to make citations available for download from a central web-based platform on-demand. To enable this to be implemented, the EPO plans to amend the language of Rule 65 EPC so that cited documents will be “made available” rather than the present requirement for them to be “transmitted”.

This change is also expected to come into force in November 2022.

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