New rules regarding communication under Rule 71(3) EPC

The EPO has decided to abolish the possibility of waiving the right to a further communication under Rule 71(3) EPC.

Since 1 July 2015 (see Notice from the EPO dated 8 June 2015 concerning the possibility to waive the right to a further communication under Rule 71(3) EPC, OJ EPO 2015, A52), the EPO offered the possibility to respond to a communication under Rule 71(3) EPC by filing amendments compared to the text intended for grant, and, at the same time, expressly waiving the right to receive a further communication under Rule 71(3) EPC.

 

This waiver option was useful in case only minor amendments were requested. Indeed, if the examining division agreed with the proposed amendments, a patent was granted directly without issuance of a further communication under Rule 71(3) EPC.

 

The EPO has, however, noted that such waivers are rarely used in practice, and has therefore decided to abolish the possibility of waiving the right to a further communication under Rule 71(3) EPC. In case of a disagreement with the text intended for grant, the EPO will thus always issue a further communication according to Rule 71(3) EPC in order to establish approval of the text intended for grant.


In consequence, the EPO will no longer process waivers filed in response to a communication dated 1 July 2020 or later informing the applicant of the text intended for grant.


Waivers which are filed in response to a communication under Rule 71(3) EPC dated before 1 July 2020 will, however, still be processed.

 

This IP Alert is for information purposes only and does not constitute legal advice.

  • Publication date: June 2020
  • By : Anne FRANCASTEL
  • Tag(s) : Procedure
  • IP ALERT : IP ALERT Munich
  • Subject(s) : Patents
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