Practical considerations around MyEPO/fee Changes 1 April 2024

European patent attorneys and supporting staff should be informed of important changes, relating to the EPO’s online systems, and also fee arrangements.
Detailed references are given at the foot of this article but a couple of key points are summarised here by John Gray, Chair of epi’s Online Communications Committee.

Recording of transfers and licences against European patent applications and unitary patents

From 1 April 2024 there are two very welcome developments relating to the registering of transfers/licences at the EPO:

• Electronic signatures of all kinds will henceforth be considered effective to show transfer/licensing of European patent rights.
• The administrative fee of €115 per case can be avoided, provided one works through the MyEPO Portfolio platform.
  Concerning electronic signatures, effectively there are no restrictions on the type of electronic signature that can be presented and accepted as evidence of a transfer. Authenticity of signatures will not be examined by the EPO unless doubts arise. Moreover, the power of a signatory to execute the transaction will no longer be checked by the EPO. (Needless to say, this responsibility remains with the parties and their representatives.)

Concerning the practicalities of the new ‘free’ option, there has not been long for users to try the new platform for this, although pilot users have had some opportunity. Here are some practicalities to bear in mind.

Using the options illustrated below, users can record transfers involving (1) individual applications already in their portfolio, (2) individual applications not already in their portfolio and (3) a bulk list of applications uploaded a list in CSV format.

Two limitations should be kept in mind:

• Currently the form must be filled in, signed and sent all by the same user in one session. Drafts cannot be saved or checked/sent by a colleague. (This applies to many actions in MyEPO Portfolio. Improvements have been requested.)
• Currently any changes in representation, file reference etc, will need to be recorded in some other way. For individual cases, such changes can be effected ‘self-service’ through MyEPO Portfolio. If you have a long list, this will have to be filed via eOLF/OLF 2.0, for the time being.

Oh, and if the upload fails for you, try using it in a different browser…

Emergencies - filing/fee payment options

As the new Arrangements for Deposit Accounts (ADA) make clear, the only way to file a debit order to meet a fees deadline is in XML format, using one of the official filing systems (eOLF, OLF2.0, MyEPO Portfolio, Central Fee Payment). In the event that one of these services is unavailable due to a fault or planned outage in the EPO’s systems, the ADA Art 11 provides that deadlines are extended until the service is available. There is no such safeguard when the IT problem is, or may be, at the user’s side.

In particular, the new Contingency Upload Service (CUS) cannot be used to meet a fees deadline, even when the money is already with the EPO, in the users deposit account. epi considers this situation most unsatisfactory, and is lobbying hard for debit orders to be indicated via CUS in an emergency. Likewise, it is impossible to file a valid debit order by email, fax (closing July 2024), on paper or any other form of communication. The recent Board of Appeal decision T480/21 provides a cautionary example.

The ONLY alternative way to effect emergency fee payment on the last day without using the “official” platforms is to instruct a bank transfer. Once you provide proof of the instruction (after the event) the date of the instruction can be treated as the date of payment under RFees Art 7(3)(ii).

Conclusion

The above and other changes in EPO online systems became effective from 1 April 2024 More details of the new services are provided in a EPO news article of 5 April 2024 online at https://www.epo.org/en/news-events/news.

Looking ahead, see also the EPO news article dated 10 April 2024 concerning the closure in July of certain ‘legacy’ tools. EPO considers OLF 2.0 is the “platform of choice” for online filings, but we have confirmation that the older eOLF software will continue in service at least through 2025. A news article dated 29 March 2024 explains concerning the culling of users’ data stored in Online Filing 2.0. Users will have until 1 April 2026 to plan their export of any important records.

References

• “Second basket” RULE changes to support digitalisation and simplification of the Patent Grant Procedure (“PGP”)

  • Decision of the Administrative Council of 14 December 2023 amending Rules 1, 22, 41, 147 and 152 of the Implementing Regulations to the European Patent Convention (CA/D 26/23) OJ EPO 2024, A16
  • FEES: Arrangements for deposit accounts (ADA) and their annexes (valid as from 1 April 2024) Supplementary publication 2, Official Journal 2024

• “Second basket” secondary legislation to implement changes – decisions and explanatory notes

  • Decisions of the President dated 9 Feb 2024 concerning signatures on contracts and declarations under Rules 22 and 85 and Rule 23 EPC OJEPO 2024 A17; and relating to European patents with unitary effect OJEPO 2024 A18

  • Decisions of the President dated 9 Feb 2024 concerning the web-based online service MyEPO Portfolio and electronic notification to the Mailbox in proceedings related to European patents with unitary effect OJEPO 2024 A19 in proceedings under the EPC and the PCT OJEPO 2024 A20

  • Notice from the EPO dated 9 Feb 2024 concerning new features of MyEPO Portfolio OJEPO 2024 A21

  • Notice from the EPO dated 9 Feb 2024 concerning revised Rule 22 EPC OJEPO 2024 A22

  • Notice from the EPO dated 15 Feb 2024 concerning the further digitalisation of the fee refund procedure OJEPO 2024 A23

• T480/21 https://www.epo.org/en/boards-of-appeal/decisions/t210480eu1