HMC-IP attorney, Catherine Hanratty, summarizes the recent changes to the Rule 71(3) “Notice of Intention to Grant” procedure at the EPO.
When the European Patent Office (EPO) intends to grant a European patent, the applicant is informed of text proposed for grant - the Druckexemplar – with the communication pursuant to Rule 71(3) EPC - the “Notice of Intention to Grant” or the “Notice of Allowance”. The applicant is required to file a response to place the application in order for allowance, The response includes approval of the text proposed for grant, translations of the claims, and payment of the grant fee. The applicant also has the option to disapprove the text proposed for grant and to file a request for amendment.
Since 2015, it was possible to request minor amendments or corrections (such as correction of typographical errors) to the text proposed for grant, at the same time as filing the translations of the claims and paying the grant fee. If the applicant did not consider it necessary to receive an updated copy of the text proposed for grant, it was possible to expressly “waive the right to issuance” of a further communication pursuant to Rule 71(3) EPC in the event that the Examining Division consented to the requested amendments. The “wavier option” was intended to speed up the procedural steps at the grant stage, in particular, for corrections that would not normally be expected to necessitate resumption of substantive examination. If all formal requirements were fulfilled and the Examining Division consented to the amendments or corrections, the next communication from the EPO was the Decision to Grant. If the Examining Division did not consent to the requested amendments then they had the options to resume substantive examination or to issue a further communication pursuant to Rule 71(3) issued.
Following consultation with users the EPO has issued a Notice concerning abolition of the option to waive the right to a further communication under Rule 71(3) EPC. This change of procedure has entered into force for communications pursuant to Rule 71(3) dated 1 July 2020 or later informing the applicant of the text proposed for grant. Further details of this change and the background thereto are to found at https://www.epo.org/law-practice/legal-texts/official-journal/2020/06/a73.html.
The change in procedure seems appropriate in the context of improved turnaround on requests for amendment to the text proposed for grant, and as options to rectify errors that occur at the grant stage are limited, also in view of Enlarged Board of Appeal Decision G1/10 of July 2012.
With these changes in procedure, if an applicant requests amendment to which the Examining Division directly consents, a new communication pursuant to Rule 71(3) EPC will issue together with a copy of the updated text proposed for grant. This communication will set a new four month deadline for filing a response to place the application in order for allowance including: providing approval of the text, the translations of the claims, and payment of the grant fee.
On the practical side, we advise applicants to continue to closely check the text proposed for grant and all changes made ex officio by the examiner using the Electronic Druckexemplar (eDrex).