The EPO Abolishes the Option to Waive the Right to a Further Notice of Allowance When Filing Amendments/Corrections
The EPO has decided to abolish the option to waive the right to a further communication under Rule 71(3) EPC (notice of allowance) when filing amendments/corrections in response to an initial communication under Rule 71(3) EPC. The option was originally introduced by the EPO in 2015 in order to improve procedural efficiency. However, the EPO has found that applicants very rarely make use of the waiver procedure, and consequently the desired improvement in efficiency has not been realised. This simplification of the EPO's grant procedure is likely to be welcomed by users of the European patent system.
When the EPO intends to grant a patent, a communication under Rule 71(3) EPC is issued which includes a text proposed for grant. If the text is acceptable, then certain procedural steps (i.e. filing claims translations and paying the grant fee) are required in response to the communication under Rule 71(3) EPC in order for the application to proceed to grant. Alternatively, if the text proposed for grant is not acceptable, amendments/corrections can be filed in response to the communication under Rule 71(3) EPC. If the examining division approves the amendments/corrections, the EPO will then issue a further communication under Rule 71(3) EPC with a new text proposed for grant.
Currently, it is possible to waive the right to receive this further communication under Rule 71(3) EPC when filing amendments/corrections, in order to speed up the grant procedure. If the waiver is used when filing amendments/corrections and the applicant completes the additional procedural steps needed for the application to proceed to grant (i.e. filing claims translations and paying the grant fee), the application will then proceed to grant without a further communication under Rule 71(3) EPC being issued.
The main reason that applicants have tended not to use the waiver procedure is that if the EPO makes a mistake in putting together the new text proposed for grant (for example by missing out a page), then the European patent will be granted with that incorrect text, and this may only be rectified by filing an appeal within two months of the grant decision. We are aware of a number of cases where the EPO has indeed made such errors during the waiver procedure. Consequently, applicants generally prefer to avoid using the waiver procedure and instead receive a further communication under Rule 71(3) EPC containing a new text proposed for grant which can be carefully checked prior to approval.
The option to waive the right to a further communication under Rule 71(3) EPC will no longer be available when responding to a communication under Rule 71(3) EPC which is dated 1 July 2020 or later. The option will remain available when responding to a communication under Rule 71(3) EPC which has a date before 1 July 2020.
If you have any questions regarding this matter, please speak to your usual J A Kemp contact.