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

We completed this year’s second update of our EPC.App reference book to legal status of 1st November 2024. As always, the English and German versions are synchronized in content. This meanwhile 13th edition of our EPC commentary covers all Official Journal articles until October 2024 with thereby implied changes of EPC provisions and is dedicated for use in EQE 2025¹.

Since the last update in April 2024, there were not many important amendments to EPC provisions, however still several smaller ones. Key changes in this update are:

1. The territorial scope of the Unified Patent Court (UPC) has been extended by the UPC ratification of Romania taking effect as of 1 September 2024 (open in EPC.App at A. 142). Thereby, the coverage of Unitary Patents (UP) registered on or after that date is increased to 18 states without change of renewal fees.
2. The new referral G 1/24 has been accepted by the Enlarged Board of Appeal (T 439/22 at A. 69). It will hopefully bring more clarity on the long-waiting question whether the description and drawings can be consulted under A. 69 EPC when interpreting the claims to assess patentability of an invention under A. 52 to 57 EPC. – In addition to this case, the integrated case law database of the online EPC.App has been complemented by all BoA decisions published until end of October 2024. Further decisions thereof can be added or cited in personal annotations as needed using the self-editing functions (illustrated in this video).
3. The requirements for filing authorisations and signing them have been amended as of 1 November 2024 (OJ 2024, A75 at A. 133). With this change, legal practitioners are treated equal to professional representatives with respect to their obligation to file an authorisation under R. 152 EPC. And in addition to handwritten signatures, now also facsimile, text-string, and other digital signatures are accepted for authenticating authorisations.
4. As a new service for professional representatives available since 1 June 2024, entries on the list of professional representatives (e.g. by successful EQE candidates) can be requested via MyEPO Portfolio (OJ 2024, A57 at A. 134).
5. As part of modernizing processes at the EPO, several older services have been discontinued:
   • The Fax as a means of filing applications and other documents has been abolished as of 1 July 2024 (OJ 2024, A41 at A. 75), even though many representatives still used faxes as fallback option. The EPO considers the Contingency Upload Service as a sufficient fallback alternative.
   • The legacy Mailbox as means of notification has been abolished as of 1 July 2024 (OJ 2024, A43 at A. 119). The Mailbox service remains available via MyEPO Portfolio. The same applies for the legacy Myfiles abolished as of 1 July 2024 (OJ 2024, A44 at A. 128).
   • The transmittance of patent literature by post together with the European Search Report has been discontinued as of 1 October 2024 (OJ 2024, A68 at A. 92) since it is also available via Espacenet.
6. The Arrangements for deposit accounts (ADA) have been updated in October 2024 to generalize the rejections and repayments to fees that are not due (OJ 2024, A81 at A. 5 Rfees).
7. A PPH pilot program with INAPI (Chile) has been started as of 1 June 2024 (OJ 2024, A56 at A. 94)
8. Following an EU sanction against Russia, proceedings for the registration of unitary effect are stayed as of 10 July for proprietors who are nationals from or resident in Russia (OJ 2024, A70 at A. 142).

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.

Feedback from EQE candidates has been reviewed and further included in the current update. Special thanks go to Stephan Hübsch for his valuable findings.

We also tested ourselves the EPAC 2024 with the version of EPC.App available before the exam. We believe it was possible to find sufficient guidance to all EPC related questions. Of course, it is always recommended to further enhance the author comments by own annotations for best results.

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 about 35 brief blue update notes in the App as shown on the screen in the image 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 high-quality print-on-demand service (see image above).

¹ Parts coming into force on 1 November after the EQE cut-off date 31 October are clearly indicated in the book. This year, this is OJ 2024, A75 about the signing and filing of authorisations. In practice, it is anyway not a realistic fear to get punished in the EQE for applying provisions which enter into force after the cut-off. It is rather advisable to become familiar with changed provisions early.