5. A variety of services and functionalities
will be piloted in phase 2, in addition to those already available in
MyEPO Portfolio (see OJ EPO 2022, A51, A52, and the information on MyEPO Portfolio on the EPO website).

Electronic notification for international agents and applicants

6. Almost all EPO correspondence in European
proceedings can be notified electronically to the Mailbox. The
decisions, summonses, notices and communications which can be notified
electronically are listed on the EPO website.

7. Electronic notification occurs by
transmission to the Mailbox. The date of transmission is the date
indicated on the document, provided that it was accessible in the
Mailbox by that date. 

8. Thus far, electronic notification has
been limited to professional representatives and applicants having their
principal place of business in an EPC contracting state as well as
legal practitioners under Article 134(8) EPC.
During phase 2 of the pilot project, electronic notification will be
available to participating international agents and international
applicants who do not have their residence or principal place of
business in an EPC contracting state but are entitled to represent
before the EPO in PCT international phase proceedings. For registered
pilot participants, this new functionality means that all communications
from the EPO acting as (S)ISA or IPEA in the international phase will
be notified via the Mailbox.^[ 1 ] These communications can be accessed via MyEPO Portfolio or the existing Mailbox service.

9. The availability of communications in ePCT is unaffected by the use of the Mailbox.

Electronic filing: new tasks

10. With MyEPO Portfolio, users can perform
procedural acts in reply to a communication from the EPO within the
prescribed period (“tasks”) and file certain procedural requests
(“actions”) together with accompanying documents. During phase 2 of the
pilot, a number of new tasks and actions will be added. More
specifically, in addition to the reply to a communication under Rule 71(3) EPC and the reply to a communication under Article 94(3) EPC, the new tasks and actions added are the following: reply to the extended European search report (Rule 70a EPC); reply to an invitation about subject-matter for search (Rules 62a or 63 EPC);
and, in due course and upon further announcement, requests relating to
the administration of the list of professional representatives.

11. These new tasks and actions will be
available to pilot participants who are European professional
representatives and legal practitioners under Article 134(8) EPC.
Delegation of access is possible to e.g. paralegals whose smart card is
associated with the same company. Other filing tools and options remain
available for 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 list indicating the tasks to be performed (Pending tasks
area). The final date for completing a specific task will be indicated
as a courtesy service. This date will reflect the rules for calculating
periods under the 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 in the tasks list but the corresponding communication
from the EPO has been validly notified to the Mailbox, pilot
participants should file the reply using one of the existing filing
tools to avoid any loss of rights.

14. Tasks are automatically removed from the
tasks list once completed or, depending on the case, once a notice of
loss of rights under Rule 112(1) EPC
is issued in the case of failure to complete a task by expiry of the
applicable period. Any subsequent, complementary submissions to be made
during the period for completing a procedural act must be filed using
other means.

15. When replying to a communication from
the EPO, users will be able to perform any acts and submit any requests
directly linked to that reply. For example, if replying to an extended
European search report, users will be offered a procedural option
applicable to their situation, reflecting whether or not the request for
examination was filed before the European search report was transmitted
to the applicant, and whether or not the search opinion is positive or
negative. The reply to an invitation under Rules 62a or 63 EPC will allow users to submit an indication of the subject-matter to be searched.

16. If users fail to observe a period for
reply and further processing is available as a legal remedy, they will
be able to immediately file a request for further processing and/or for a
decision under Rule 112(2) EPC.
Once the corresponding notice of loss of rights has been issued and
notified via Mailbox, a new task will be generated (“react to the noting
of loss of rights”) and can be completed by requesting further
processing.

17. When performing any tasks or actions,
pilot participants can upload accompanying documents as attachments,
containing e.g. grounds in support of a request or amendments to the
application documents. “PDF” and “TIFF” are the admissible document
formats for those attachments.

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

19. During the pilot project, fees can be
paid via one of the existing online tools (Central Fee Payment, Online
Filing and Online Filing 2.0). If a procedural action requires the
payment of a fee, pilot participants will be informed accordingly. As an
intermediate solution, pilot participants will see information about
fees that are due and will have the option to open Central Fee Payment
to pay the fees. Back in MyEPO Portfolio, pilot participants will see
that the overview of fees due has been updated. For further information
regarding Central Fee Payment, see the notice from the European Patent
Office dated 19 July 2022 (EPO OJ 2022, A81).

20. Professional representatives or legal
practitioners may delegate the preparation of any task or action to
employees of the same company, as set out in the user guide. Submissions prepared by those employees will then be reviewed, signed and submitted by the appointed representative.

21. In all other respects, unless otherwise
provided, piloted tasks function as described in the decision of the
President dated 11 May 2022 concerning the web-based online service
MyEPO Portfolio (EPO OJ 2022, A51) and the corresponding notice from the EPO (EPO OJ 2022, A52).

Electronic filing: management of professional representatives’ data

22. In due course and upon further
announcement, the possibility to file requests relating to the
administration of the list of professional representatives will be made
available to European professional representatives participating in the
pilot. They will then be able to:

– request entry on the list of professional representatives before the European Patent Office

– request deletion from the list of professional representatives before the European Patent Office

– request changes to professional representatives’ personal data.

III. Other EPO services

23. Pilot participants may continue to use the MyFiles^[ 2 ] and existing Mailbox^[ 3 ] services for the duration of the project. EPO online filing services^[ 4 ] are unaffected by the pilot.

IV. Duration of the pilot and next steps

24. Phase 2 of the pilot project will
commence on 1 November 2022 and will last until 30 June 2023. The EPO
will use the feedback received from the pilot participants to further
improve the services offered in MyEPO Portfolio. Phase 2 of the pilot
may be extended, its scope changed, or certain features removed. Pilot
participants will be informed of such changes in advance. These changes
will also be announced on the EPO website.

^[ 1 ] epo.org/applying/online-services/mailbox.html.

^[ 2 ]
Decision of the President of the European Patent Office dated 26 April
2012 concerning notification of representation changes by professional
representatives (EPO OJ 5/2012, 352).

^[ 3 ]
Decision of the President of the European Patent Office dated 11 March
2015 concerning the pilot project to introduce new means of electronic
communication in EPO proceedings (EPO OJ 2015, A28).

^[ 4 ] Decision of the President of the European Patent Office dated 14 May 2021 concerning the electronic filing of documents (OJ EPO 2021, A42).