EPC - general practice, new provisions, EPC.App updates

The update of our EPC.App reference book to legal status of 1st November 2022 is completed. As usual, the English and German versions are synchronized in content. This 9th edition of our EPC commentary includes all Official Journal articles until October 2022 with thereby implied changes and is dedicated for use in EQE 2023.

Most prominent changes of legal provisions since the last update in April are summarized below:

1. New Rule 56a on correcting erroneously filed application documents or parts has been introduced (open in EPC.App at A. 90) and now supplements Rule 56 on filing missing parts of the description and missing drawings. As of 1 November 2022, said Rule 56a aligns the EPC with R. 20.5bis PCT which was already introduced in July 2020 (open in PCT.App Part 3.4.1). Reservations against this PCT provisions for the EPO as rO and dO/eO are now correspondingly withdrawn. In contrast to Rule 56, new Rule 56a also allows corrections of claims. A parallel amendment of Rule 56(3), however, limits the inclusion of missing parts from a priority application in that such priority must now be claimed on the initial filing date (corresponding to PCT and PLT). Minor amendments in Rule 135 EPC and Art. 2 Rfees further reflect the changes. In general, Rules 56 and 56a address issues that rarely occur in practice. However, their complexity may become a fruitful source of exam questions such as in the EQE (though not yet in 2023 since the entry into force is after the cutoff 31 October 2022). A detailed discussion of the new / amended Rules can be found in epi information 3/22.
   
2. The decisions in the widely followed cases J 8/20 and J 9/20 on AI inventors have been issued (in EPC.App at A. 60). Without much surprise, they confirm that a machine is not an inventor within the meaning of the EPC as currently in force. For offering flexibility while keeping the default content of the book concise, any further case law of the Boards of Appeal published until October 2022 has been added to the integrated case law database of the online EPC.App. Decisions thereof can be included in user scope (with headnotes and links to the EPO website) or cited in personal annotations as needed using the self-editing functions of the platform (illustrated in this video). Reviews by Daniel X. Thomas in the CASELAW category of this blog may serve as further inspirations in this respect.
   
3. The EPC accession of Montenegro (ME) as of 1 October 2022 (in EPC.App at A. 3) and corresponding termination of the extension agreement for applications with a later filing date (in EPC.App at A. 79). While there are not many applicants who actively seek for a designation of Montenegro, it may be a topic of practical relevance for adaptation of docketing software and letter templates. There is a significant transitional period since ME will continue to count as extension state for divisional applications derived from applications with a filing date before October 2022.
   
4. Introduction of WIPO Standard ST.26 for sequence listings as of 01 July 2022 (in EPC.App at A. 78) which replaces the prior electronic standard ST.25 in TXT format by a more state-of-the-art XML format. The likely long-term advantages of the introduction of ST.26 come with possible short-term issues. The new provision applies to all applications filed on or after 1 July 2022 without any transitional period. So, a divisional application may have to be filed with a different standard than its parent application or a new application with a different standard than its priority application. This creates burden of transforming data on the applicant’s side and may lead to issues of added subject matter or invalid priority claims. Concerns and counterproposals have been submitted on behalf of the epi.
   
5. Further digitalization steps in EPO proceedings such as the full deployment of Central Fee Payment (CFP) as of 10 September 2022 and corresponding adaptation of the arrangements for deposit accounts (ADA) (in EPC.App at A. 5 Rfees) as well as the MyEPO portfolio as of 1 June 2022 (in EPC.App at A. 75). Compared to Online Fee Payment (OFP) which is decommissioned since said 10 Sep 2022, CFP provides a facelift and integrates all existing payment methods of direct debit via EPO deposit account, automatic debit order, credit card, and bank transfer in one place. However, payment amounts sometimes still need to be corrected by manual entry. MyEPO Portfolio similarly integrates the EPO Mailbox and MyFiles in a modernized platform. In the latter, documents can now be inspected in the original data format filed (potentially including colour and machine-readable text), but it still takes weeks after filing until documents of a new application show up in MyFiles. For very early adopters, MyEPO Portfolio further allows procedural transmissions, starting with responses to R. 71(3) communications (and more coming in a 2nd pilot). It also includes email alerts for time limits, but the EPO does not accept responsibility so that it remains necessary to watch 100% of the time limits via established procedures. An API as electronic channel for automized transfer to and from docketing systems is planned. Larger scale users can be expected to wait for this before having a reason to try the new service (similar for Online Filing 2.0).

The above links to the online versions of the book can be followed when being logged-in. A free one month test account is available, which does not extend automatically after expiry.

As usual, all changes of the update are automatically included in the online version on the next login. And as part of our update service, changes are additionally indicated by more than 60 brief blue update notes in the App as shown in the picture above and further explained in the FAQs. Of course, self-edited user content from before the update is retained in the respective personal storage on the webserver, and can be exported into the printable PDF offline version so as to avoid time-consuming transfer of handwritten annotations to the new edition. A 2-minute video illustrating the update process and related functions can also be found in our youtube channel.

To further avoid the need of replacing pages in a folder, a customized color paperback with up-to-date content and typed user comments can be ordered via our integrated print-on-demand service. This is offered using a world-wide operating print provider.

For those who still prefer to start with a classical printed book, we published also the EPC.App November 2022 Edition as stand-alone black-and-white paperback (see top image). The book is available in English and German via Amazon.