1. By decision of 13 October 2022,^[ 1 ]
the Administrative Council of the European Patent Organisation adopted a
set of legal changes to the Implementing Regulations to the Convention
on the Grant of European Patents (EPC) that will support the ongoing
digital transformation in the patent grant procedure at the European
Patent Office (EPO) and strengthen alignment with the Patent Cooperation
Treaty (PCT). In this context, it delegated the authority to decide on
the presentation requirements of application and other documents to the
President of the EPO. This rule change and a decision of the President
restating the current requirements^[ 2 ] will enter into force on 1 February 2023. Furthermore, the Administrative Council adopted amendments to Rule 65 EPC governing the transmittal of documents cited in search reports and to Rules 126, 127 and 131 EPC on notification and time limit calculation, which will apply as of 1 February 2023 and 1 November 2023 respectively.

II. Presentation requirements of documents

a. Changes to the Implementing Regulations to the EPC

2. Article 78 EPC
defines the requirements of a European patent application. It lists the
documents making up the application as being the request for grant, the
description, the claims, the drawings and the abstract.

3. Currently, Rules 46, 49 and 50 EPC implement certain aspects of Article 78 EPC. Rule 46 EPC defines the form of the drawings and Rule 49(2)–(12) EPC defines the presentation requirements which all documents making up the application must meet. According to Rule 50(1) EPC these requirements apply equally to documents replacing the application documents. Rule 50(2) EPC provides formal requirements for documents other than application documents. Rules 57(i) and 82(2) EPC govern the examination of compliance with these provisions.

4. Under the revised rules, the power to set
the presentation requirements is delegated to the President of the EPO.
Corresponding enabling clauses can be found in Rules 49(2) and 50(2) EPC. Rules 46 and 49(3)–(12) EPC are deleted and references to them in Rules 50(1), 57(i) and 82(2) EPC are adapted.

5. This delegation of power provides for a
flexible regulatory system that ensures rapid and easy adjustment of
these provisions to developments in the EPO’s digital systems. The
current provisions were drafted with a paper-based procedure in mind,
before for example online publication of high-quality, colour documents
was feasible. They are to be modernised once the EPO’s IT tools are
ready for end-to-end processing in colour. The modernisation of the
provisions will furthermore allow different requirements to be
prescribed for electronically filed documents and those filed on paper,
considering the specific requirements for these filing methods. For
instance, it is likely that it will first be possible to process and
allow electronically filed colour drawings and only later paper-filed
ones. For electronic filings it may also be possible to replace page
numbers with paragraph numbers.

b. Decision of the President of the EPO on the presentation of application and other documents

6. The first decision of the President under
the enabling clauses enters into force on 1 February 2023 and does not
contain any changes to the presentation requirements of documents.
Changes to the requirements will be made after discussion at
international level (in the PCT context), with EPC contracting states
and with users, and will enter into force by way of a revised decision
of the President.

7. In addition, the first decision of the
President restates the current requirements in a consolidated manner:
presentation requirements for application and other documents are
included in one single decision of the President, which also contains
the requirements for drawings. The requirements for application
documents (including those for drawings) apply both to documents making
up the application and to documents replacing these documents. The
requirements under Article 2 of the decision also apply to the
translation of the claims referred to in Rule 71 EPC.^[ 3 ]

8. The decision also reflects the EPO’s
current practice regarding the examination of presentation requirements.
The Receiving Section does not examine those requirements that relate
to the content of the application or are more technical.^[ 4 ]
The examining division focuses on these requirements if checks have
already been made by the Receiving Section and the examining division
assumes responsibility for the application under Rule 10 EPC.^[ 5 ]
Any examination by the EPO of the requirements listed in Article 4(2)
of the decision is limited to the extent necessary for the purpose of a
satisfactory reproduction or a reasonably uniform publication of the
application under Rule 68(1) EPC.^[ 6 ] This is today’s practice[ 7 ] and aligns the EPO legal framework with the PCT.[ 8 ]

9. The decision also clarifies which formal
requirements apply if a European patent is maintained in amended form
during opposition proceedings. As today, the applicable requirements
under Rule 82(2), third sentence, EPC are that the amendments must be made in typed or printed form in the manner specified.[ 9 ] If
in oral opposition proceedings the interlocutory decision of the
opposition division has been based on documents not complying with these
requirements, the formalities officer will request the patent
proprietor to file a formally compliant verbatim version of amended text
passages once the interlocutory decision becomes final.[ 10 ]

III. Transmittal of documents cited in search reports

10. The amendment of Rule 65 EPC
governing the transmittal of the European search report lays the legal
groundwork for offering more advanced EPO digital services in the
future. The revised provision will enable the EPO to make the documents
cited in search reports available to applicants through new digital
services and not only to transmit them to the Mailbox or by post, as is
the case today. These new services would allow electronic access to all
kinds of citation, including multimedia and internet citations.

11. The amended Rule 65 EPC
is split into two sentences. The first sentence governs the transmittal
of the search report, which, together with the search opinion, will
continue to be transmitted to the applicant electronically to the
Mailbox or by post. The new second sentence specifies that the cited
documents will be made available.

12. This amendment will enter into force on
1 February 2023. Since the solution for digital access to cited
documents has not yet been designed, the entry into force of the amended
provision will initially not result in a change to the EPO’s practice.
The new solution will be announced separately.

IV. Notification and time limit calculation

13. The amendments to Rules 126(2), 127(2) and 131(2) EPC
concern the main notification methods – notification by postal services
and by electronic means – as well as the calculation of periods in
proceedings before the EPO.

14. Amended Rules 126(2) and 127(2) EPC
introduce a new notification fiction, according to which postal and
electronic notification are deemed to occur on the date of the document.
Under established EPO practice, the date of the document is the date on
which it is handed over to a postal service provider in the case of
postal notification or the date of its electronic transmission in the
case of electronic notification. The revised notification fiction can be
found in the first sentence of amended Rules 126(2) and 127(2) EPC.
As a result, the current notification fiction under these provisions,
according to which the deemed notification of a document occurs ten days
after it has been issued, will be abandoned.

15. The second sentence of Rules 126(2) and 127(2) EPC
as amended governs the burden of proof in exceptional cases where
notification is disputed. As today, the EPO will have to demonstrate the
fact and the date of delivery in such instances. Where a notification
dispute leads to the conclusion that a document has been delivered
exceptionally late, a new safeguard introduced in the last sentence of
revised Rules 126(2) and 127(2) EPC
will apply. In particular, if the EPO cannot show that a document has
reached the addressee within seven days of the date it bears, the
relevant period will be extended by the number of days by which these
seven days are exceeded.

16. Finally, amended Rule 131(2) EPC
provides that, in the case of notification, it is the deemed receipt of
the document notified which will constitute the relevant event for the
purposes of time limit calculation. As a result, periods will be
triggered by deemed notification under revised Rules 126(2) and 127(2) EPC.

17. The amendments to Rules 126(2), 127(2) and 131(2) EPC
will enter into force on 1 November 2023. They will apply to documents
notified by postal services or electronic means on or after this date.
Dedicated information on the new notification fiction, the topic of
burden of proof in the case of notification disputes, the application of
the new safeguard, as well as the resulting computation of periods will
be published in March 2023.

^[ 1 ] CA/D 10/22 of 13 October 2022, OJ EPO 2022, A101.

^[ 2 ]
Decision of the President of the European Patent Office dated
25 November 2022 on the presentation of application and other documents.

^[ 3 ] Rule 50(1) EPC as in force from 1 February 2023.

^[ 4 ]
Articles 1(2)(i) and (j) and 2(8), fourth sentence, (9) and (10) of the
decision of the President of the European Patent Office dated
25 November 2022 on the presentation of application and other documents.

^[ 5 ] Guidelines for Examination in the EPO, 2022 edition, A-III, 3.2.

^[ 6 ]
Article 4(3) of the decision of the President of the European Patent
Office dated 25 November 2022 on the presentation of application and
other documents.

^[ 7 ] Guidelines for Examination in the EPO, 2022 edition, A-III, 3.2.

^[ 8 ] See Rule 26.3(a)(i) PCT.

^[ 9 ]
Articles 5 and 2(7) of the decision of the President of the European
Patent Office dated 25 November 2022 on the presentation of application
and other documents.

^[ 10 ] Guidelines for Examination in the EPO, 2022 edition, D-VI, 7.2.3.