CIPA'S Comments and the EPO's Response
The EPO Liaison Committee (EPLC) is tasked with monitoring legal and procedural developments at the EPO and making submissions both in response to EPO consultations and to concerns raised more generally. If you want to raise any issues or contribute more substantively, please contact email@example.com.
On 28 May 2014, CIPA's EPLC's submission on handwritten amendments was sent to The Administrative Council of the EPO, Committee on Patent Law. Copies were sent to FICPI, EPI, AIPPI, IP Federation, and Union. The submission set out below includes proposal to issue guidance to clarify issues arising around handwritten amendments.
Following the EPO change of practice in relation to handwritten amendments in oral proceedings, the EPO has taken account of practical concerns this has raised for practitioners. Particular issues have included the lack of availability of appropriate facilities at the EPO, the practical difficulties and the difficulties some businesses face in bringing company laptops out of the office, for data security purposes. The EPO has issued additional guidance but practical experience suggests that in some cases attendees at oral proceedings are still only permitted to file machine readable amendments during the proceedings.
From feedback from many practitioners this remains a very difficult and stressful addition to the complexities of oral proceedings in any event. We are also concerned that the practice leads to inefficiencies for the Division or Board, as amending the description electronically takes longer, and thus creates more "downtime", whilst checking of electronic amendments is also more time consuming, all to the detriment of the efficiency of the EPO.
We should be grateful if the EPO would issue clear guidance to at least all Examiners and Opposition Division members that handwritten amendments are always permitted in oral proceedings. We should like it to include appropriate qualification such as the requirement to file machine readable versions within an appropriate period.
EPO's Response to CIPA
The following notice from Raimund Lutz (Vice President Legal / International Affairs | Dir. 5, European Patent Office) was sent to CIPA on 24 June 2014 in response to CIPA's submission (above) on handwritten amendments. The EPO Liaison Committee (EPLC) has been working hard, in the background for some years now, lobbying the EPO with mixed success. However, CIPA was explicitly mentioned when the divisional rules were originally rewritten and the response from the EPO here is a real success – and reflects well on the EPO’s desire to take into account stakeholder needs:
Thank you very much for forwarding us the CIPA submission containing the proposal to issue guidance in order to clarify the new practice of the EPO concerning handwritten amendments. The letter was addressed to the Committee on Patent Law via the Council Secretariat.
Concerns are expressed that in some cases only machine readable amendments are permitted to be filed during oral proceedings. It is particularly stressed that the new practice remains a very difficult and stressful addition to the complexities of oral proceedings in spite of the EPO’s efforts to take these difficulties into account.
CIPA thus proposes that clear guidance is issued to all examiners that handwritten amendments are always permitted in oral proceedings and that an appropriate time limit for filing machine readable versions of the application documents is provided.
I am delighted to inform you that, according to the procedure in place, the Examining or Opposition Divisions must allow the filing of documents containing handwritten amendments to be used as a basis for discussion on patentability. A machine readable copy of the documents is to be filed only once the final agreement on the text of the patent is reached. Moreover, if the applicant or proprietor is unable to provide formally correct application or patent specification documents during oral proceedings, for example due to technical problems or time constraints, an additional time limit of two months for filing the formally correct documents should be granted by the division.
In view of the unfortunate experiences reported by CIPA, the EPO will make every effort to ensure that the instructions for the examiners are clear and unambiguous in this regard. Moreover, the frequently asked questions on handwritten amendments published on the website of the EPO will be significantly clarified. We also expect that the new version of the ‘Guidelines for examination in the EPO’ will contribute to a better understanding of the new practice. The new edition of the Guidelines will be issued in November 2014.
Given the current mandate of the Committee on Patent Law and the rather technical nature of the issues raised, I have taken the liberty of answering your letter myself. Please do not hesitate to contact me again should you need any further information.