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Amendment of the EPC Rules to Support Digital Transformation

January 25, 2023

epi‘s Council has delegated to its European Patent Practice Committee (EPPC) responsibility for monitoring all developments in the law and practice at the EPO. As part of this, EPPC has a sub-committee which interacts with the Standing Advisory Committee of the European Patent Office’s (SACEPO) Working Party on Rules (WPR). As part of this activity, epi monitored and contributed to the development of a number of amendments to the Rules and followed the development through the SACEPO WPR, the Committee on Patent Law and the Administrative Council.

In December, the Administrative Council agreed to amend a number of the EPC Implementing Regulations (the Rules) to “support digital transformation in the patent grant procedure”.
As a result of this, the following Rules will be changed.

Rules 46, 49, 50, 57 and 82 will be amended so that the requirements relating to the presentation of application documents, drawings, documents filed subsequently and amended application documents filed during opposition proceedings will not appear in the Rules but will be prescribed by the President of the EPO. The intention is to make it easier for the EPO to change the requirements for these documents. The requirements and any changes to them will be published in notices from the President. In the immediate future, there will be no change to the requirements.

Rule 65 has been amended so that the EPO is not required to send to the applicant a copy of any cited documents together with the Search Report. Instead, the documents will be “made available” and may be made available in electronic form.

Rules 126, 127 and 131 have been amended so that the “ten day” period will be abolished.

The amendments to Rules 46, 49, 50, 57, 65 and 82 will enter into force on 1st February, 2023. As these amendments seemed sensible, epi did not object to them in principle.

The amendment to Rules 126, 127 and 131 will enter into force on 1st November, 2023. epi was split as to whether the ten day rule should be abolished and argued that, as no overwhelming reason was presented for its removal, it should be retained. However, after much debate, the Administrative Council decided on its abolition.

The EPO has not finished in its project to amend the Rules, as necessary, to support digital transformation.

At the next meeting of the SACEPO WPR on 16th March 2023, the EPO plans to continue the discussions and exchanges with epi, Business Europe and others on the topic . This will include reviewing the Rule changes referred to above (the so-called 1st basket) but also preparing a 2nd basket, as digitalisation and simplification will continue to feature high on the EPO’s agenda.

We at epi therefore request all epi members to send by email proposals for amendments to the Rules so that your delegates to the SACEPO WPR can propose them to the EPO. We therefore would very much appreciate you sending to us proposals for amendment to the Rules, accompanied by a brief explanation of the background and purpose of any proposed amendment and, where appropriate, proposed wording for the amendment.

If you have any proposal, please send it by email to eppc@patentepi.org as soon as possible. The EPO has requested that epi should supply all proposals to the EPO by 15th February.

Please contribute to this very important topic. I look forward to reading your proposals.

Chris Mercer – Chair - EPPC

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