How to amend before the EPO
The IPKat has received correspondence from a number a kind informants, pointing out the small but highly practically significant change in practice recently announced by the EPO, that hand-written amendments are to be abolished. The IPKat is delighted that none other than Derk (with an e not an i) Visser, esteemed author of The Annotated European Patent Convention, and also colleague of this Kat, accepted a commission to write a guest blogpost about this. So with great pleasure, over now to Derk.
The EPO is moving toward a paperless office.
A new step in this process will affect most European patent attorneys.
Up to now, the EPO has accepted handwritten amendments. When issuing a Rule 71(3) EPC communication, an examiner may pencil any amendments he proposes to make the case allowable in the Druckexemplar (who knows a proper English word for this, galley proof?) (see Guidelines H-III, 2.3). A patent attorney could also make small amendments in a document by scribbling in the changes. Handwritten amendments have been allowable according to the Guidelines, section A-III, 3.2 and A-VIII, 2.3 and have been most convenient, because the typography makes clear what the amendments are. They have even been recommended, as the filing of completely retyped documents is normally objected to for reasons of procedural economy because they have to be checked for correspondence with the original documents (H-III, 2.3; T113/92).
Over the years handwritten amendments have caused problems in that amendments of the examiner in the Druckexemplar were not clearly legible and amendments of the patent attorney in parts of the patent application were misread. As a consequence, the text of a granted patent based on such a handwritten amendments could be incorrect. The correction of such a text after the decision to grant has recently been made increasingly difficult if not impossible by decision G1/10.
In view of these problems, the EPO has decided to abolish handwritten amendments and corrections as per 01.01.2014. In a Notice of 8.11.2013 the EPO have published the strict application of Rule 50(1) EPC in conjunction with Rule 49(8) EPC, requiring that replacement documents of the patent application must be typed or printed; no more handwriting. As an exception in Rule 49(8), only graphic symbols and characters and chemical or mathematical formulae may be drawn or written by hand if necessary. The EPO must be able to capture all submitted documents electronically in such a way that it can deal with them using text-processing software.
As from 01.01.2014 the Druckexemplar will be produced electronically and will not have handwritten amendments anymore. The Notice does not state the form in which amendments will be presented and how the Druckexemplar will be sent to the party; it will probably be sent in paper form. Hence, the patent attorney must copy the acceptable amendments to his electronic version of the document and return it to the EPO, where the examiner has to compare documents again to see if no other amendments have been made other than those indicated by track changes. Such a process does not yet appear to improve procedural economy. What happens if the examiner has made a mistake in marking the changes, for example forgotten to switch on ‘track changes’? Even more reason to check the Druckexemplar very carefully.
If an error is spotted in the Druckexemplar, for example in an amendment of the examiner, one has to go through the process of a second Rule 71(3) communication. The grant procedure cannot be sped up by prepayment of the fees and filing of translations in response to the first Rule 71(3) communication; even a waiver will not help. If you have filed an amendment and have complied with all requirements, the EPO will still send you the second Rule 71(3) communication, simply asking you to confirm your previous submissions. (Note, that this is a truly exceptional case where the EPO ask such confirmation; usually your submissions are supposed to reflect your opinion without confirmation. The process of sending a second Rule 71(3) communication in such a situation has recently been confirmed by DG5.)
The Notice of 8.11.2013 neither states the form in which the patent attorneys must submit amendments to documents. It does, however, mention that they must bring a laptop or similar device on which the amendments can be prepared during oral proceedings; even then parties can apparently not resort to handwritten amendments. The EPO will provide applicants and proprietors with electronic copies of their Druckexemplar or patent specification. It is not clear from the Notice, whether the electronic copies will be provided during oral proceedings only or also during written proceedings, the latter of which would solve the copying and checking problem of the previous paragraph.
The rooms made available for patent agents during oral proceedings generally contain computers which can read CD-ROMs, USB sticks, etc., together with printers which normally allow documents to be printed direct from USB sticks (underlining added by the IPKat). You may wonder how an agent would print his amended documents if he happens to have a room without computer or a printer that does not like USB sticks.
It is well known that the EPO does not appreciate computer viruses. Hence, your medium storing the documents should be free from them according to the Notice. What happens if your computer is attacked by a virus or breaks down because of end-of-life issues during oral proceedings? Is this the end of the amendments? Will there be a fall-back method for filing amendments?
The Notice gives the impression that it is a pre-announcement of changes to come in view of the many open ends. However, it is not a pre-announcement: the prohibition of handwritten amendments will enter into force already on 1.1.2014! Avid readers of the EPO website may have spotted that all offices of the EPO will be closed from 21.12.2013 to 1.1.2014. Merpel surmises that the EPO have sent most employees home to have a free hand to tool up the office for the introduction of hands-free amendments.
The EPO is moving toward a paperless office.
A new step in this process will affect most European patent attorneys.
 |
| The IPKat contemplates making manuscript amendments |
Over the years handwritten amendments have caused problems in that amendments of the examiner in the Druckexemplar were not clearly legible and amendments of the patent attorney in parts of the patent application were misread. As a consequence, the text of a granted patent based on such a handwritten amendments could be incorrect. The correction of such a text after the decision to grant has recently been made increasingly difficult if not impossible by decision G1/10.
In view of these problems, the EPO has decided to abolish handwritten amendments and corrections as per 01.01.2014. In a Notice of 8.11.2013 the EPO have published the strict application of Rule 50(1) EPC in conjunction with Rule 49(8) EPC, requiring that replacement documents of the patent application must be typed or printed; no more handwriting. As an exception in Rule 49(8), only graphic symbols and characters and chemical or mathematical formulae may be drawn or written by hand if necessary. The EPO must be able to capture all submitted documents electronically in such a way that it can deal with them using text-processing software.
As from 01.01.2014 the Druckexemplar will be produced electronically and will not have handwritten amendments anymore. The Notice does not state the form in which amendments will be presented and how the Druckexemplar will be sent to the party; it will probably be sent in paper form. Hence, the patent attorney must copy the acceptable amendments to his electronic version of the document and return it to the EPO, where the examiner has to compare documents again to see if no other amendments have been made other than those indicated by track changes. Such a process does not yet appear to improve procedural economy. What happens if the examiner has made a mistake in marking the changes, for example forgotten to switch on ‘track changes’? Even more reason to check the Druckexemplar very carefully.
If an error is spotted in the Druckexemplar, for example in an amendment of the examiner, one has to go through the process of a second Rule 71(3) communication. The grant procedure cannot be sped up by prepayment of the fees and filing of translations in response to the first Rule 71(3) communication; even a waiver will not help. If you have filed an amendment and have complied with all requirements, the EPO will still send you the second Rule 71(3) communication, simply asking you to confirm your previous submissions. (Note, that this is a truly exceptional case where the EPO ask such confirmation; usually your submissions are supposed to reflect your opinion without confirmation. The process of sending a second Rule 71(3) communication in such a situation has recently been confirmed by DG5.)
The Notice of 8.11.2013 neither states the form in which the patent attorneys must submit amendments to documents. It does, however, mention that they must bring a laptop or similar device on which the amendments can be prepared during oral proceedings; even then parties can apparently not resort to handwritten amendments. The EPO will provide applicants and proprietors with electronic copies of their Druckexemplar or patent specification. It is not clear from the Notice, whether the electronic copies will be provided during oral proceedings only or also during written proceedings, the latter of which would solve the copying and checking problem of the previous paragraph.
The rooms made available for patent agents during oral proceedings generally contain computers which can read CD-ROMs, USB sticks, etc., together with printers which normally allow documents to be printed direct from USB sticks (underlining added by the IPKat). You may wonder how an agent would print his amended documents if he happens to have a room without computer or a printer that does not like USB sticks.
It is well known that the EPO does not appreciate computer viruses. Hence, your medium storing the documents should be free from them according to the Notice. What happens if your computer is attacked by a virus or breaks down because of end-of-life issues during oral proceedings? Is this the end of the amendments? Will there be a fall-back method for filing amendments?
The Notice gives the impression that it is a pre-announcement of changes to come in view of the many open ends. However, it is not a pre-announcement: the prohibition of handwritten amendments will enter into force already on 1.1.2014! Avid readers of the EPO website may have spotted that all offices of the EPO will be closed from 21.12.2013 to 1.1.2014. Merpel surmises that the EPO have sent most employees home to have a free hand to tool up the office for the introduction of hands-free amendments.
