1. By decision of 14 October 2015[ 1 ] the Administrative Council of the European Patent Organisation amended Rule 147(1) to (3) EPC. Rule 147(4) and (5) EPC remains unchanged. The change reflects the reality of electronic data storage at the European Patent Office (EPO). It also introduces the basis for a balanced policy for preserving documents initially submitted in paper form and then incorporated into the electronic file.
Constitution, maintenance and preservation of files (Rule 147(1) and (2) EPC)
2. Rule 147(1) EPC as amended makes it clear that the EPO constitutes, maintains and preserves patent and patent application files in electronic form. Rule 147(2) EPC updates the President's managerial powers in line with the EPO's commitment to the electronic file, empowering him to determine the technical and administrative arrangements necessary to ensure that the EPO can manage the electronic files efficiently.
Preservation period for paper documents incorporated into the electronic file (Rule 147(3) EPC)
3. Since 18 May 1998 the EPO has been incorporating into the electronic file all paper documents filed on or after that date. The electronic file is considered to be the original file (see Rule 147(3) EPC). In May 1998 it was decided to keep and store initial paper submissions until further notice. [ 2 ]
4. Since then, however, the electronic file has proved to be entirely reliable. This renders indefinite storage of initial paper submissions unnecessary. Therefore, Rule 147(3) EPC as amended introduces a 5-year period for preserving any initial paper version of documents incorporated into the electronic file, after which time the EPO may destroy the initial paper version of the document – whether submitted by a party or produced by the EPO. [ 3 ]
5. The EPO would point out that the consequences of expiry of the 5-year preservation period do not apply to initial versions of documents submitted in an admissible electronic format. Nor does Rule 147(3) EPC apply to record copies of international PCT applications filed with the EPO on paper and kept by the EPO on behalf of the International Bureau. Also, Rule 147(4) and (5) EPC stipulating the preservation periods for patent and patent application files remains unchanged.
6. The amendment of Rule 147(1) to (3) EPC enters into force on 1 November 2016. It applies to all European patent applications and patents, with the proviso that the 5-year preservation period stipulated in Rule 147(3) EPC will not expire before 31 December 2018, regardless of the date on which the document was incorporated into the electronic file.
[ 2 ] See Article 3(2) of the decision of the President of the EPO dated 14 May 1998 concerning phased implementation and use of the PHOENIX electronic file system for the creation, maintenance, preservation and inspection of files (OJ EPO 1998, 360) and Article 2(2) of the decision of the President of the EPO dated 12 July 2007 concerning use of the PHOENIX electronic file system for the creation, maintenance and preservation of files (Special edition No. 3, OJ EPO 2007, J.1).
[ 3 ] In this regard, the two provisions referred to in footnote 2 above no longer apply.