EPO grant procedure more efficient as of 1 July 2015
21 July 2015
The EPO recently announced slight changes (found here) to the procedure regarding Rule 71(3) EPC communications, which allows an applicant a final opportunity to amend or correct their application before grant. Prior to 1 July 2015, when an applicant responded to a R71(3) communication with amendments, a new R71(3) communication had to be issued if the Examining Division accepted the requested further amendments.
As of 1 July 2015, when responding to a R71(3) communication with amendments, the applicant may waive their rights to a further R71(3) communication, in order to accelerate proceedings.
In order to successfully waive their rights to a further R71(3) communication, an applicant must:
- expressly state that they wish to waive their rights;
- file the required translations of the claims;
- pay grant fees, publishing fees and any excess claims fees;
- clearly identify any amendments or corrections to the application, providing basis within the application as filed; and
- file the relevant pages of the document that have been amended or corrected.
The waiving of rights in this manner only applies to the next R71(3) communication. As such, if a further R71(3) communication is necessary (because the Examining Division has made further amendments), the applicant must restate their desire to waive their rights in the next response.
A request to retract the waiving of rights will be considered by the EPO up until the decision to grant communication is given to the EPO’s internal postal service.
If the waiver is not accepted, either because the above requirements are not met or the amendments are not allowable, the applicant will be sent a further R71(3) communication, or be informed that the examination procedure is being resumed. Should the examination procedure resume, a new R71(3) communication will be issued at the conclusion of the procedure, and the process will continue as above.
Please click here for more detailed information on the changes to the R71(3) communication procedure.
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This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Withers & Rogers LLP, July 2015