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Law & practice

Official Journal August 2021

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Citation: OJ EPO 2021, A65
Online publication date: 31.8.2021

Notice from the European Patent Office dated 19 August 2021 concerning the user area pilot project

I. Introduction

1. Under its Strategic Plan 2023 the EPO is working towards a digital transformation that will deliver new online tools to better address user needs. In particular, as part of Key initiative 3 under Goal 2 – Develop new online user engagement – the EPO is creating a web-based user area: a secure portal for registered users bringing several online services together in one place. It is designed to improve the exchange of digital information, simplify procedures and enable more direct interaction with the EPO.

2. The user area will provide a single point of access to a user's patent application portfolio and to electronic notifications in EPO proceedings (Mailbox), along with a contemporary, simplified approach to making procedural submissions. It will offer an interface that is more user-friendly, intuitive and accessible to all kinds of users. Functionalities will be progressively added.

3. In view of these plans, a pilot project is being launched to gather user feedback, which will enable the EPO to refine the user area services before their general release. See also the decision of the Vice-President Legal and International Affairs (Directorate-General 5) of the European Patent Office dated 19 August 2021 concerning the user area pilot project (OJ EPO 2021, A64).

4. The user area services are intended to eventually replace the My Files service and become the only point of access to Mailbox. Users will be given sufficient advance notice to prepare for these changes.

5. This notice provides further information on the user area pilot.

II. Services included in the pilot

Electronic notification

6. Almost all EPO correspondence in European proceedings can already be notified electronically. The access to Mailbox provided in the user area will incorporate and improve the functionalities of the current access to Mailbox. Pilot participants will be able to access Mailbox via the user area or in the existing way. Electronic notification via Mailbox will therefore cover the same decisions, summonses, notices and communications, regardless of how it is accessed. A list of communications notified electronically via Mailbox is available on the EPO website.[ 1 ]

Viewing of the application portfolio

7. Viewing of the application portfolio will incorporate the functionalities of the current My Files service as well as offering improvements, such as a contemporary design and a simpler user experience and interface. The portfolio will provide an overview of, and enable inspection of the files belonging to, the patent applications and granted patents for which the European professional representative accessing the service is appointed, regardless of the stage of the proceedings before the EPO.

8. When viewing the content of the electronic file, pilot participants will be able to see documents in the original data format in which they were filed. This means for instance that, if these documents in their original data format contain parts in colour, these parts will be displayed in colour in the user area. Functionalities may be added as the pilot progresses. Initially, viewing of the application portfolio will be available to European professional representatives only. Further categories of users may be added over the course of the pilot. In future, international agents and applicants may also be able to work in the user area.

Electronic filing

9. Pilot participants will be able to perform procedural acts within the prescribed period in reply to a communication from the EPO ("tasks"); file procedural requests which are not subject to a period and not in reply to a communication from the EPO ("actions"); and submit documents accompanying these tasks and actions. Initially, pilot participants will only be able to reply to the communication about the intention to grant (Rule 71(3) EPC). Actions and further tasks may be added as the pilot progresses. They will be announced in a dedicated section of the EPO website[ 2 ] and communicated to pilot participants before being added.

10. Unlike other EPO filing tools, the electronic filing service in the user area will not be form- and document-based. It will enable interaction focused on content, controlled by an electronic workflow. This new approach will make it simpler for participants to perform procedural acts while reducing the risk of error. It will also enable the EPO to capture and process all submissions as structured data. Users will be guided through the submission process with the aid of relevant procedural information.

11. The electronic filing service is a complementary service offered to the pilot participants. Other electronic filing tools will remain available to all users.

12. Communications from the EPO to be replied to within a prescribed period will be both notified via Mailbox and reflected in a menu containing the tasks to be performed by the pilot participant that is displayed in the user area. The final date for completing a specific task will be indicated. This date will reflect the ten-day rule under Rule 126(2) EPC and the closure days of the EPO filing offices under Rule 134(1) EPC.

13. In the exceptional situation where a task is missing from the task menu but the corresponding EPO communication has been validly notified via Mailbox, pilot participants should file their reply using one of the existing means of filing to avoid any loss of rights. In addition, any subsequent, complementary submissions to be made during the period for a procedural act – for example corrections to the amendments submitted in reply to the communication under Rule 71(3) EPC – will also have to be filed using other means during the pilot.

14. A task will be automatically removed from the task menu once it has been performed or – if the task is not performed by the date indicated (i.e. within the period to be observed) – once a notice of loss of rights under Rule 112(1) EPC has been issued. See also point 17 below.

15. When performing tasks or actions, pilot participants will be able to upload accompanying documents as attachments – for example grounds in support of a request or amendments to the application documents. The admissible formats for these attachments will be PDF, DOCX and TIFF.

16. As a final step in the filing process, pilot participants will be invited to confirm the filing on the basis of an automatically generated document reproducing the electronic filing in its entirety (i.e. a request or reply to an EPO communication together with any accompanying documents). Upon confirmation of the submission, it will immediately be added to the file of the corresponding patent application or patent and made available for public inspection in accordance with Article 128 EPC.

17. As far as replying to the communication about the intention to grant in the user area is concerned, pilot participants will be able to perform any acts, submit any requests and act on any follow-up communication directly linked to that reply. For example they will be able to submit a translation of the claims, file amendments to the text proposed for grant or request the correction or update of the application's bibliographic data. If they fail to observe the four-month period for reply, they will be able to file a request for further processing and for a decision under Rule 112(2) EPC until the corresponding notice of loss of rights under Rule 112(1) EPC has been dispatched. Once this notice has been issued and notified via Mailbox, any request for further processing or a decision must be filed using other means of filing (see also points 13 and 14 above).

18. The further tasks that may be added as the pilot progresses include the reply to the extended European search report (Rule 70a EPC), the reply to a communication in examination under Article 94(3) EPC and submissions in preparation for oral proceedings in examination (Rule 116 EPC). The actions that may be added include requesting the correction or update of an application's bibliographic data, requesting the registration of a transfer of rights (Rule 22 EPC) and giving notice of withdrawal from representation.

19. During the pilot, fees can be paid via one of the existing online tools (Central Fee Payment, Online Filing or Online Fee Payment). Where a procedural act requires the payment of a fee, pilot participants will be informed accordingly. As an intermediate solution, and to facilitate payment, a link to Central Fee Payment will be displayed after confirmation of the submission. For information on Central Fee Payment, see the notice from the European Patent Office dated 13 July 2021 concerning Central Fee Payment (OJ EPO 2021, A61).

III. Formal and technical requirements

20. The user area has been designed to be as intuitive as possible by including contextual help and information. The EPO website will provide more information on the formal and technical requirements to be met while using the user area services.

IV. Other EPO services

21. Pilot participants may continue to use My Files and access Mailbox in the existing way after the launch of the user area pilot. The other EPO online filing services remain unaffected by the pilot.

V. Duration of the pilot and next steps

22. The pilot will commence on 2 November 2021 and is planned to last for at least six months. Its scope may be changed or limited at any time. The EPO will use the feedback received from the pilot participants to refine the services offered in the user area. Any changes to the pilot under Article 9 of the decision of the Vice-President Legal and International Affairs (Directorate-General 5) of the European Patent Office dated 19 August 2021 concerning the user area pilot project (OJ EPO 2021, A64) will be announced on the EPO website.[ 3 ]