Official Journal of the EPO and PCT Newsletter - June 2020

This summary contains the highlights from the June issues of the Official Journal of the EPO and the PCT Newsletter, along with links to the complete publications.

Official Journal EPO June 2020

Highlights

-          Due to the COVID-19 pandemic, the additional fee for belated payment of a renewal fee is waived until 31 August 2020. This applies to European patent applications in respect of which a renewal fee falls due on or after 15 March 2020 and has not been paid on the due date.
https://www.epo.org/law-practice/legal-texts/official-journal/2020/06/a70.html
https://www.epo.org/law-practice/legal-texts/official-journal/2020/06/a75.html

-          During telephone consultations and during interviews and oral proceedings held by videoconference, documents filed subsequently as referred to in Rule 50 EPC, including authorisations, must be filed by email.
In examination proceedings, documents must be sent to the email address indicated by the examining division or the member conducting the telephone consultation or interview.
In opposition proceedings, documents must be sent to the email address indicated by the opposition division and, where possible, to the email addresses indicated by the other parties.
In appeal proceedings, documents must be sent to the email address indicated by the board of appeal. Where applicable, they must also be sent to the email addresses indicated by the other parties.

Further information, e.g. regarding signatures and attachments, is found here: https://www.epo.org/law-practice/legal-texts/official-journal/2020/06/a71.html.

-          The option to waive the right to a further communication under Rule 71(3) EPC is removed, starting from communications dated 1 July 2020. One reason for removing this option is that since the option was introduced, only a few applicants have availed themselves of the opportunity to expedite the patent grant procedure by filing a waiver.

https://www.epo.org/law-practice/legal-texts/official-journal/2020/06/a73.html

-          On 1 July 2020, new Rule 20.5bis PCT, which allows applicants to correct an erroneously filed element (description or claims) or part of the description, claims or drawings (including all drawings) contained in an international application, will enter into force. The EPO has notified WIPO that this provision is partially incompatible with the current legal framework under the EPC and will therefore not be fully applicable in proceedings before the EPO as receiving and designated/elected Office. Detailed information about the applicability of Rule 20.5bis PCT in proceedings before the EPO and an overview of the possible procedural scenarios are found here: https://www.epo.org/law-practice/legal-texts/official-journal/2020/06/a81.html

 

Decision of the Enlarged Board of Appeal (G 2/19)

Headword: 1. Right to be heard and 2. Correct venue for oral proceedings.
Catchword: 1. A third party within the meaning of Article 115 EPC who has filed an appeal against a decision to grant a European patent has no right to have its request for an order that examination proceedings in respect of the European patent be reopened for the purpose of removing allegedly unclear claims (Article 84 EPC) heard at oral proceedings before a board of appeal of the European Patent Office. An appeal filed in such a way has no suspensive effect.
2. Oral proceedings before the boards of appeal at their site in Haar do not infringe Articles 113(1) and 116(1) EPC.
https://www.epo.org/law-practice/legal-texts/official-journal/2020/06/a87.html

Link to complete Official Journal as PDF: https://www.epo.org/law-practice/legal-texts/official-journal/2020/06/2020-06.pdf

 

PCT Newsletter June 2020

Highlights

-          In May, WIPO launched WIPO PROOF, a new online business service which allows you to create a date- and time-stamped fingerprint (known as a WIPO PROOF token) of a digital file. It produces tamper-proof evidence that the digital file of your intellectual asset existed at a specific point in time, and that it has not been altered since then. More information about the service is found here: https://wipoproof.wipo.int/wdts/

-          The English version of the “Introduction to the International Phase” of the PCT Applicant’s Guide has been updated to take into account the amendments to the PCT Regulations that entered into force on 1 July 2020, as well as other updates. The updated guide is available here: https://www.wipo.int/pct/en/guide/index.html and a webinar providing an overview of the changes is available here (registration needed): https://register.gotowebinar.com/recording/7207139698340682246

Link to complete newsletter as PDF: https://www.wipo.int/edocs/pctndocs/en/2020/pct_news_2020_6.pdf

// Annelie Persson