New Rules 71 and 71a EPC
As from April 1, 2012 amended Rule 71 EPC and new Rule 71a EPC entered into force. Basically, there will be no change to the current procedure, however, the old two-stage grant procedure will have a comeback in case the applicant disapproves of the documents proposed by the Examining Division for patent grant.
Pursuant to Rule 71(3) EPC, the Examining Division informs the applicant of the text on the basis of which it intends to grant a patent. This text may include amendments and corrections made by the Examining Division on its own initiative which it can reasonably expect the applicant to accept. The text is sent to the applicant, simultaneously inviting him to pay the fee for grant and publishing and to file a translation of the claims in the two other official languages of the EPO.
This Communication under Rule 71(3) contains also the bibliographic data of the application. The applicant is expected to check said data and to file a request for correction in case there is any mistake. Otherwise, the EPO will assume that the data is correct.
Upon receipt of the Communication under Rule 71(3) EPC, the applicant has the following options:
1. The applicant approves the text intended for grant If the applicant pays the required fees and files the translations of the claims within the specified period, he is deemed to have approved the text intended for grant.
Subsequent to the applicant's approval, the Examining Division may resume the examination procedure at any time up to the moment the decision to grant is handed over to the EPO's internal postal service for transmittal to the applicant. This will seldom occur, but may be necessary if e.g. the Examining Division becomes aware of very relevant prior art following observations by third parties under Article 115 EPC.
2. The applicant disapproves of the text proposed for grant The applicant may reply to the Communication under Rule 71(3) EPC by filing amendments or corrections, possibly together with arguments as to why he disagrees with the Examining Division.
If the applicant requests amendments or corrections to the communicated text which are reasoned, the Examining Division will issue a new Communication un-der Rule 71(3) EPC if it gives its consent; otherwise it will re-open the examination proceedings.
If the applicant fails to file a response to the second Communication under Rule 71(3) EPC within the inextensible time limit of four months, the application will be deemed to be withdrawn. However, further processing is possible.
Once all the requirements are met, the decision to grant the European patent is issued.
As from July 1, 2015, the applicant has the right to file a waiver regarding the right to receive a further Communication under Rule 71(3) EPC. In this case, the deadline set by the Communication under Rule 71(3) EPC has to be observed and the applicant has to file a full response within the prescribed period. In case a request for amendment of the claims is filed, the claims translations have to be based on the amendments proposed in the claims.
If the Examining Division finds the proposed amendments acceptable and all re-quirements have been duly fulfilled, the Decision to Grant will be issued. If the Ex-amining Division disapproves of the proposed amendments, the waiver will not be consented to and the examination proceedings will continue.
Therefore, it is recommendable to make use of the waiver only in the case of minor amendments, such as typographical errors.
In the rare case that examination was accelerated to such an extent that the com-munication under Rule 71(3) EPC is issued before the designation fee becomes due, the decision to grant will not be issued and the mention of the grant of the patent will not be published until the designation fee has been paid. The applicant is informed accordingly.