IP Cases & Articles

EPO simplifies grant procedures under Rule 71(3) EPC

For anyone non-familiar with the prosecution of EP applications before the European Patent Office (EPO), a Rule 71(3) EPC communication is an intention to grant communication which is accompanied by a text that the Examining Division is proposing for grant. The applicant can then accept the changes, reject them, or file amendments or corrections to the text proposed for grant.

Previously, and under the new Rule 71(3) EPC procedure in force since 1 April 2012, if any correction or amendment was made to the text proposed for grant, a new Rule 71(3) EPC communication had to be issued by the EPO, however minor the correction or amendment was. In many cases, such a procedure was both procedurally inefficient and unnecessary.

The EPO has just announced that, as of Wednesday 01 July 2015, applicants will have the opportunity to waive their right for a further Rule 71(3) EPC communication when amendments or corrections are made in response to a previous Rule 71(3) EPC communication. Effectively, while this is unlikely to be used in cases where substantive amendments are carried out, this will greatly accelerate the grant procedure for applications where typographical or minor errors are detected and corrected at the Rule 71(3) EPC stage.

Provided that the applicant identifies the changes made in the response, identifies the basis for making the changes and fulfils the requirements for grant (eg, pay the required fees, file claim translations), the application may then proceed straight to grant once the examining division has reviewed and approved the changes.

This is a much welcomed change from the EPO which will facilitate the correction of minor errors in applications before they are granted, and also which will avoid unnecessary costs to applicants.

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