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Law & practice

Official Journal September 2019

Download PDF (multilingual)
Citation: OJ EPO 2019, A79
Online publication date: 30.9.2019

Notice from the European Patent Office dated 12 August 2019 concerning the recommended practice for requesting changes in relation to client data or procedural matters, in particular bulk requests concerning more than one application

1. The EPO receives an increasing number of submissions with requests that concern more than one application (hereinafter "bulk requests"). Such bulk requests may relate to client data (such as name, address, representative, transfer of rights, etc.) or procedural matters (such as withdrawal of applications, etc.). A large number of these requests contain formal deficiencies or are incomplete/unclear.

2. This notice aims to provide recommendations on how to prepare bulk requests so they can be processed smoothly, efficiently and promptly for the benefit of both the requester and the EPO. Many of the recommendations apply equally to requests affecting a single application only.

3. In addition to this notice, the EPO has taken measures to improve and facilitate how bulk requests are processed. These include reorganising its internal processes and developing new forms to help requesters make clear and unambiguous (bulk) requests.

4. It is emphasised that the processing of bulk requests by the EPO is a courtesy service not required under the EPC. Nevertheless, as a service-oriented organisation, the EPO will continue to accept bulk requests to maintain the high level of service that requesters are accustomed to receiving. The final responsibility for the accuracy of a request and the completeness of a list of applications/patents lies with the requester. The EPO cannot be held liable for any errors resulting from inaccurate or incomplete requests.

5. This notice is structured in three parts. The first part contains general recommendations for making clear and unambiguous requests, the second provides specific recommendations for making bulk requests and the third addresses specific issues concerning the international phase.

I. General recommendations for making clear and unambiguous requests

Means of filing

6. Requests should preferably be filed using Online Filing or new online filing (CMS). Do not send a fax confirmation. When making a submission, select Form F1038E in Online Filing or in CMS. Then choose the correct document type. [ 1 ] If you want to combine several types of request in a single submission (for example, a transfer of rights and a change of representative), choose the document type corresponding to what you consider the main request to be (in the example this would be the transfer of rights).

7. Use the new forms provided by the EPO. They can be downloaded from the EPO website in editable PDF format and filed via Online Filing or CMS. [ 2 ] Refer to the notes accompanying each form for further guidance.

8. The following forms in particular can be used as of 1 November 2019 for both single and bulk requests.

‒ EPO Form 5050 (registration of a transfer of rights)

‒ EPO Form 5051 (change in the particulars (name and address) of the applicant/proprietor)

‒ EPO Form 5055 (bilateral declaration of a transfer of rights)

‒ EPO Form 5060 (change of representative or new appointment where no representative was appointed)

‒ EPO Form 5061 (change in the particulars (name and address) of the representative)

‒ EPO Form 1018 (withdrawal of application)

Formal requirements

9. Always indicate European patent application numbers in full (eight digits plus one check digit). Check that the application numbers are correct and whether the EPO is (still) competent. A request for registration of a transfer of rights can be filed as long as grant proceedings are pending. After grant, any transfer of a European patent can be made during the opposition period or during opposition proceedings. This applies mutatis mutandis for any request relating to client data, e.g. change of name or change of representative.

10. Ensure that the request is signed by an authorised person. Identify the name and, where applicable, the position of the person signing. Documents filed electronically must be signed by the authorised person, although they may be transmitted to the EPO using a smart card issued to another person. [ 3 ] In the case of transfer of rights, provide proof of the authority to assign the right. [ 4 ]

11. If, contrary to the recommendation given in point 7, you decide not to use the forms provided by the EPO, ensure the wording you use is unambiguous. For example, do not write "The application is abandoned/allowed to lapse/not continued", but rather "The application is withdrawn".

12. Make sure to spell the name and address consistently in the letterhead, footer and request text, especially when requesting a change of name or address. Avoid inconsistencies in the spelling or capitalisation of the legal status of a legal person, such as "Example Aktiebolag" and "EXAMPLE AB".

13. To file or revoke an automatic debit order, observe the requirements laid down in points 1.2 and 10.1 of the Arrangements for the automatic debiting procedure (AAD), i.e. file such a request in an electronically processable format (XML) via the EPO's online services. Note that an automatic debit order ceases to be effective on explicit revocation only, also in the case of transfer of rights and/or withdrawal of representation (point 10.2 AAD).

14. To file or amend instructions for the refund of fees to a deposit account held with the EPO, the necessary instructions must be filed in advance in an electronically processable format using one of the permitted electronic means of filing (see point 8 of the Arrangements for deposit accounts in force as from 1 October 2019).

15. For requests for registration of transfer of rights or for a change of name or address, make sure that the documents needed to prove the required amendment are signed by an authorised person, [ 5 ] and that any administrative fees have been paid, if applicable.

II. Specific recommendations for bulk requests

16. All general recommendations set out above apply equally to bulk requests.

17. A bulk request should preferably be filed using one of the forms provided (point 7), with a clear indication that it concerns more than one application or patent. A check box is provided on the forms for this purpose. The request should be filed only for the first application number indicated on the form (hereinafter "leading application"). All further application numbers should be listed on a separate sheet (or sheets). Do not file a separate request for each application/patent (for the requirements applicable to the payment of the fee for registration of transfer, where appropriate, see point 21). The EPO will insert the request in each file indicated on the list. Further, it will issue a written confirmation of the change performed for each application/patent concerned, unless the requester expresses the wish in the bulk request to receive only one confirmation in the leading application. [ 6 ] However, in that case too, the confirmation of the change is uploaded to the electronic file of all applications/patents concerned.

18. Bulk requests should, in principle, always include a list of all application and patent numbers covered by the request. The only exception to this requirement is a request to change the name or address of the applicant/patent proprietor or representative. In such cases, the bulk request may exceptionally refer to "all our applications/patents". The EPO will make every effort to identify all applications and patents concerned by such a general request (see, however, point 4 above).

19. The bulk request (the request itself and the list of application numbers concerned) should preferably be filed as a PDF document using Online Filing or CMS (see point 6). The list should be filed on a separate sheet (or sheets). Check the quality and readability of the list, ensuring in particular the adequate font size of the application numbers.

20. To facilitate processing, requesters are invited, after having filed the request as recommended in point 19, to send the list of all application numbers concerned as an Excel file (XLS or XLSX format) via email to support@epo.org. Failure to follow this step may delay processing considerably. The email subject should contain the term "bulk request" and mention the number of the leading application in which the bulk request was filed (see point 17). The subject could be worded as follows: "Bulk request filed in application xx xxx xxx.x".

21. In the case of a transfer of rights, indicate whether or not there is also a change in representation. When submitting documentary evidence to prove a transfer of rights, requesters should mark the applications to be transferred (e.g. with an "x") in that documentary evidence. Check the quality and readability of the documentary evidence. If you wish to pay the fee for the registration of the transfer (fee code 022) via Online Filing or CMS, the debit order must be filed in an electronic processable format in each individual application. Payments for multiple applications may only be made using the batch payment functionality in the Online Fee Payment tool. If fees for multiple applications are paid under a single application using Online Filing or CMS, i.e. by amending the amount, the EPO will refund the fees paid for all but the first application; this may result in a later effective date of the transfer for all other applications concerned. [ 7 ]

Consequences of non-compliance

22. Non-compliance with these recommendations may result in delayed processing.

23. In case of unclear or incomplete requests, the EPO will invite the requester to remedy any ambiguity or deficiency within a period of two months from notification of the corresponding communication. Failure to reply to this communication within the set time limit will result in the request not being processed. The procedure will be continued on the basis of the information on file, until a new request is filed. This does not apply to a request for registration of transfer of rights or registration of licences and other rights. In this case, the request will be rejected.

III. Processing requests concerning international applications

24. Requests under Rule 92bis PCT concerning applications pending in the international phase should be filed with the International Bureau of WIPO ("IB"). If such a request concerns more than one application, the IB usually requires the filing of a list of all applications concerned (for further information, please consult the IB). Requests to record a change under Rule 92bis PCT should be filed with the IB, preferably via the online portal for filing and managing PCT applications (ePCT), by selecting the action "Rule 92bis change request".

25. The recording of changes under Rule 92bis PCT takes effect only if received by the IB before the expiration of 30 months from the priority date. If, after the expiration of 30 months from the priority date, i.e. when the IB is no longer competent to record a change, a requester sends the EPO a request to change its address or that of its agent, or to change the agent, the EPO will apply the requested change when communicating with the applicant/agent until the entry into the European phase at 31 months. The EPO will process such requests only if they do not require the submission of evidence or are not deficient in any way. In particular, in the case of bulk requests, a list of the applications concerned is always required. In other words, the exception provided for in point 18 of the present notice does not apply.

 

 

[ 1 ] A list of document types is available in the Online Filing User Guide (point 8.5.1), which is available for download from the EPO website (epo.org).

[ 2 ] EPO forms are available for download from the EPO website (epo.org/applying/forms/forms.html).

[ 3 ] See Guidelines for Examination, A‒VIII, 3; Decision of the President of the European Patent Office dated 9 May 2018 concerning the electronic filing of documents, OJ EPO 2018, A45.

[ 4 ] See Guidelines for Examination, E‒XIV, 3.

[ 5 ] See Guidelines for Examination, E‒XIV, 3.

[ 6 ] Note that such confirmation is sent in respect of requests relating to client data only. Requesting receipt of confirmation only in the leading application is solely possible for bulk requests concerning at least six applications/patents.

[ 7 ] Further information on how to make batch payments can be found in the EPO Online Multipay Tool User Guide and the Quick Reference Guide for Online Fee Payment at epo.org/applying/online-services/fee-payment/documentation.html.