The European Patent Office has adopted amendments to the Implementing Regulations to the European Patent Convention

@China IP News Network

Recently, the Administrative Council of the European Patent Office (EPO) adopted a series of amendments to the Implementing Regulations of the European Patent Convention (the "Regulations"), thereby advancing the ongoing digitalization of the EPO's patent grant process. These legal changes will come into effect in two phases as follows. 

The first-phase package of measures (effective as of February 1, 2023) 

The first part of the plan concerns the requirements for the presentation of documents. These requirements will be stipulated by the President of the EPO in the future, rather than being defined in the Implementing Regulations. Therefore, Articles 46 and 49(3) to (12) will be deleted and integrated into the President's decision. Articles 49(2), 50, 57(i) and 82(2) of the Implementing Regulations will be adjusted accordingly. These changes will ensure greater flexibility to adapt to presentation requirements as the digitalization process progresses. Since the President's decision will reaffirm the current presentation requirements, the Office's practice will not be affected. 

The second part of the plan includes the amendment of Article 65 of the Implementing Regulations. In the future, the documents cited in the search report will be publicly accessible instead of being sent to the applicant as is the case now. This will not only reduce paper consumption but also support the full use of all types of citations, including multimedia citations. The technical solution for implementing this service is under development and will be announced at an appropriate time before implementation. Therefore, the amendment to Article 65 will not cause any changes in practice for the time being. 

The second-phase package of measures (effective from November 1, 2023) 

In order to align with the Patent Cooperation Treaty (PCT), the Implementing Regulations will apply new provisions regarding notifications and time limit calculations as of November 1, 2023. The existing "10-day rule" will be abolished, and documents will be deemed to have been notified on the date of their generation. Safeguard measures will be provided if a document is not received or is received late (more than 7 days after the prescribed date). If there is a dispute regarding the delivery of a document, the EPO will retain the obligation to prove that the document has been delivered and to provide the delivery date. This change will affect Articles 126(2), 127(2), and 131(2) of the Implementing Regulations. Shifting the focus of the notification system from paper to the digital world, that is, delivering electronic documents on the same day, is a key aspect of the Office's digital transformation. Further details will be notified before the revised Implementing Regulations come into effect. 

Users will soon receive more detailed notifications. The Administrative Committee's decision CA/D 10/22 will be published in the November issue of the Official Journal and will be made available in advance on the EPO website. The corresponding notice from the EPO and the decision of the President will be published in the December issue of the Official Journal. The 2023 EPO Guidelines for Examination, which will come into effect on 1 March 2023, will also reflect the relevant updates.