Decision of the Vice-President Legal and International Affairs (Directorate-General 5) of the European Patent Office dated 23 July 2020 concerning the pilot project on notification by email during examination proceedings
In accordance with Article 12 of the decision of the President of the European Patent Office (EPO) dated 11 March 2015 concerning the pilot project to introduce new means of electronic communication in EPO proceedings (OJ EPO 2015, A28), and in particular its Article 6, it has been decided to include in that pilot project the possibility of using email to notify certain notices and other communications issued during examination proceedings, subject to the applicable provisions of the EPC and the conditions laid down in this decision.
Scope of the pilot project
(1) The EPO will conduct a pilot project under which any notice or other communication issued by examining divisions in relation to scheduled oral proceedings may be notified by email. Notification by email will be possible for any such notice or other communication from which no time limit is reckoned and which is issued between the final date for making written submissions fixed under Rule 116(1) EPC and the date of the scheduled oral proceedings. However, it will be limited to those issued in proceedings relating to European patent applications which have been published under Article 93 EPC. Applicants participating in the pilot project will likewise be permitted to use email to file submissions in reply to such notices or communications under the conditions laid down in Article 4 of this decision.
(2) The pilot project will be conducted by examining divisions assigned to the directorates selected to participate.
(3) The pilot project will start on 1 September 2020 and run until 31 August 2021. It will cover European patent applications in respect of which a summons to oral proceedings is issued on or after 1 September 2020. It will also apply to European patent applications in respect of which a summons to oral proceedings is issued before that date if the final date for making written submissions fixed under Rule 116(1) EPC is on or after 1 October 2020.
(4) The EPO reserves the right to limit the scope of the pilot project or otherwise change it, in whole or in part, as well as to discontinue or extend the pilot project.
Conditions for participation in the pilot project
(1) Where proceedings fall under the scope of the pilot project as defined in Article 1, the examining division will inform the applicant accordingly and invite them to give their consent to receiving any eligible notice or other communication by email.
(2) The applicant will be deemed to have consented to participation in the pilot project if they provide the EPO, by the date fixed under Rule 116(1) EPC, with an email address at which they wish to receive any eligible notice or other communication from the examining division.
(3) Participation in the pilot project is voluntary and open to applicants who have been invited to participate in accordance with paragraph 1 above.
Notification by email
(1) Notification by email will be effected to the email address provided by the applicant in accordance with Article 2(2). Any notice or other communication so notified will be sent as a PDF attachment from a central email account administered by the participating directorate concerned.
(2) The email will be deemed to have been transmitted within the meaning of Rule 127(2) EPC on the date on which it is sent.
(3) No paper copies will be notified in parallel.
(4) Applicants will be required to acknowledge receipt promptly. If the EPO does not receive the acknowledgement of receipt within 24 hours, it will contact the applicant and, where appropriate, renotify the notice or communication.
Submissions filed by applicants by email
(1) The applicant may use email to file submissions in reply to any notice or other communication notified by email under Article 3 of this decision. For such submissions to be legally valid, they must be sent to the central directorate email address referred to in Article 3(1) of this decision. Submissions sent to the email address of any member of the examining division will have no legal effect.
(2) Articles 2 and 4 of the decision of the President of the European Patent Office dated 13 May 2020 concerning the filing of documents during telephone consultations and during interviews and oral proceedings held by videoconference (OJ EPO 2020, A71) will apply mutatis mutandis to submissions validly filed by email.
(3) The EPO will promptly acknowledge receipt of submissions validly filed by email.
(4) Paper confirmation of documents filed by email in accordance with this decision is not required.
Integrity of the file
Any notice or other communication notified, and any submissions received, by email within the scope of the pilot project will be made available for file inspection in accordance with Article 128 EPC. The confidentiality notice which is routinely included in some emails will not be regarded as a request to exclude these submissions from file inspection.
Entry into force
This decision will enter into force on 1 September 2020.
Done at Munich, 23 July 2020
Vice-President Legal and International Affairs