The EPO is currently running a roadshow for professional representatives around Europe covering changes to the Guidelines for Examination and other matters such as rule 164 EPC, “Doing business with the EPO electronically”, early entry into the European phase, effective use of procedural options, the rule 71(3) EPC procedure and Article 123(2) EPC.

Recently the roadshow made it to London and in this post we take a look at early processing, PCT Direct and rule 71(3) EPC. The first post in this series looked at the rule 164 procedure and some fee related changes.

Early processing

A discussion relating to early entry into the European regional phase was held in which it was pointed out that, depending exactly how early the entry is being made, the requirements that need to be fulfilled on a particular case may change. In particular, if regional phase entry is requested either before the international search report has issued or within 6 months of the issuance of the ISR then payment of the designation and examination fees is not required for the early processing request to be effective. Similarly, if the early processing request is made within 2 years of the international filing date (in the event there is no priority claim) then the renewal fee will not be required for early processing to begin.

Once early processing has begun then the international processing of that application has ended as far as the EPO is concerned. Therefore any changes made in the international phase (e.g. change of applicant) have no effect on the EP-PCT application.

The fees which need to be paid for early processing cannot be made by automatic debit order and claims fees are not required (due on end of rule 161 stage as normal).

A non effective request will leave the application in the international phase and the applicant can choose whether to do nothing and process the application as normal at the 31 month point or correct any errors in the early processing request.

There is no form for early processing and so an explicit request, preferably with reference to Articles 23(2)/40(2) PCT, needs to be made.

It was pointed out that an early processing request often goes hand in hand with a waiver of the rule 161 communication. Where the rule 161 communication is not waived it was noted that, in the event an applicant replies early to the rule 161 (e..g within a month of receiving it), they should also explicitly give the EPO permission to continue with prosecution of the application otherwise the EPO will wait out the entire 6 month rule 161 period (though one audience member suggested that, as far as one of their own cases was concerned, the EPO had considered they could continue with prosecution once an amendment had been filed because rule 161 only provides an (i.e. one only) opportunity to make amendments).

PCT Direct

The EPO representative at the roadshow asked the audience (approx 100 representatives) how many of them had heard about PCT Direct. Only 3 or 4 people put their hands up (a state of affairs that was apparently matched in the Munich roadshow).

The PCT Direct procedure has been in force since 1 November 2014 and applies in cases where a PCT application is filed which claims priority from an earlier EP patent application or a national patent application which the EPO has searched.

Under PCT Direct, the Applicant can amend the claims to address/overcome the EPO search objections in the earlier application and can include a letter with the PCT application comprising informal comments which explain the amendments made and why these overcome the objections. In this way the PCT international search report and written opinion effectively becomes the EPO’s second written opinion on the application and as a consequence the application can proceed more quickly towards allowance.

It is noted that the PCT Direct letter does not form part of the international application and the informal comments need to make sense as they stand without requiring the reader to refer back to the earlier search (because the earlier application’s EP search may not be publicly available and may not be formally published). A marked up copy of the specification showing changes from the priority application may preferably be included in a PCT Direct filing (in which case it should form a single PDF document with the PCT Direct letter). Full details of the procedure may be found in the September 2014 OJ article.

Rule 71(3) procedure

The rule 71(3) procedure changed slightly on 1 July 2015 such that applicants making amendments in response to a rule 71(3) communication have the option of expressly waiving the right to receive further rule 71(3) communications under certain circumstances.

In a nutshell, where an applicant responds to a rule 71(3) by making reasoned amendments to the claims proposed by the examiner, a further rule 71(3) communication can be waived if:

• the applicant expressly indicates in their reply that their right to a further rule 71(3) is waived (there’s no special form for this, the cover letter will do)
• a translation of the amended claims is filed in the required EPO languages
• grant and printing fees are paid (+claims fees if required)
• amendments/corrections are identified (with a reasoned statement, e.g. highlighting basis)
• updated pages are filed.

The EPO will not grant the waiver if:

• there’s no explicit waiver
• some changes are required by the Examining division (even minor changes like changing a capital letter)
• a resumption of substantial examination is needed
• some of the formal requirements are not met.

It is also noted that the waiver only applies in respect of the next rule 71(3) communication. Further rule 71(3) communications require further waivers to be filed.

The impact of G1/10 on rule 140 EPC was highlighted (rule 140 is not available to correct granted patents) and it was also pointed out that the new rule 71(3) procedure could mean that the Druckexemplar is not the definitive text in some cases (instead it would be the Druckexemplar plus the Applicant’s comments). Internally however the EPO is expected to prepare the further 71(3) communication but will not issue it where there’s a waiver and will instead just place it on file.

Mark Richardson 13 October 2015