POSSIBILITY TO WAIVE THE RIGHT TO A FURTHER PRE-GRANT COMMUNICATION ACCORDING TO RULE 71(3) EPC
With the communication according to Rule 71(3) EPC, the European Patent Office communicates the text intended for grant.
The examining division often proposes modifications in the text.
According to Rule 71(6) EPC, if the applicant does not agree with the text intended for grant, the applicant has to disagree with the text intended for grant and to provide reasoned amendments and corrections. If the examining division agrees with the amendments and corrections, the European Patent Office then issues a new communication according to Rule 71(3) EPC with a new text intended for grant.
The EPO now proposes, in its notice dated 8 June 2015, to increase the procedural efficiency by providing the option to the applicant to waive the right to receive a further communication according to Rule 71(3) EPC. The following conditions must be fulfilled within the non-extendable four months period set under Rule 71(3) EPC:
- Expressly indicate that the applicant wishes to waive the right to receive a further communication according to Rule 71(3)EPC,
- File a translation of the claims in the two official languages of the EPO other than the language of the proceedings,
- Pay the claims fees (if necessary), the grant and publishing fee,
- Identify the amendments or corrections
If all the formal requirements are fulfilled and the examining division has no objection to the amendments or corrections, then the examining division is deemed to have consented to the waiver and no further communication under Rule 71(3) EPC will be sent.
The examining division will then proceed with the issuance of the decision to grant the European patent.
It should be noted that the applicant is deemed to have approved the grant of the patent as amended or corrected and to have verified the bibliographic data.
If the examining division does not consent to the amendments or corrections, it will either resume the examination proceedings or send a new communication according to Rule 71(3) EPC.
The new practice should facilitate the prosecution of patent applications before the EPO.
This new practice is available as of 1 July 2015.
This is only a rough overview about the new practice of the EPO. For more details or any questions please do not hesitate to contact us.
Contact : Jacob Klinkisch