Revised EPO Grant Procedure
From 1 July 2002, the procedure for the grant of European patents will change. Amendments to Rule 51 of the European Patent Convention will streamline the process for approving the text of the patent, paying the grant and printing fees and translating the claims into the official languages of the European Patent Office. Although we cannot foresee the future practice of the European Patent Office exactly, it is clear that it will become more difficult and expensive to make amendments or corrections in the text after issue of the Rule 51(4) communication.
The new single-stage procedure will apply to any application where a communication under Rule 51(4) EPC has not issued by 1 July 2002, and replaces the previous two-stage procedure.
Under the new procedure, once the examiner considers the text to be in order for grant, the European Patent Office will issue a single communication specifying the text proposed for grant, setting a term of between two and four months (extendable by a single extension of up to two months as of right) for the payment of the grant and printing fees and also for the filing of the claim translations. Explicit approval of the text is no longer required. Instead, the text will be deemed to be approved if the fees are paid and the claims translations are filed.
If the proposed text is acceptable to the applicant, then the new procedure is merely an accelerated version of the old procedure. However, if any amendments or corrections to the text are required, then they must be requested in the response, and translations of the claims including any amendments or corrections must be prepared and filed.
If the amendments or corrections are acceptable to the examiner, the application will proceed to grant. However, if the amendments or corrections are not acceptable to the examiner, the applicant will be invited to withdraw or revise the amendments or corrections. Translations of claim amendments or corrections will again be needed.
If the revised amendments or corrections are found to be unacceptable, the application will be refused and the grant fees paid will be refunded. Of course, oral proceedings may be requested in order to discuss the amendments before any such refusal is given. Any refusal decision will be appealable to the Boards of Appeal of the European Patent Office.
In conclusion, it is clear that the text proposed for grant in a Rule 51(4) communication must be reviewed as early as possible so that any amendments desired are carefully prepared, along with the preparation of any necessary claim translations. It is also clear that caution will be needed in order to avoid appointment of oral proceedings and the potential refusal of an application if amendments of a substantive nature are requested after issue of a communication under Rule 51(4). Also, as amendments or corrections in the claims will need to be translated before they are approved, the expense of making such amendments or corrections will increase in most cases.
Finally, we mention that, since 2 January 2002, it has been possible to file a divisional application at any time up to the date of grant of a patent on the immediate parent application. The deadline of the date of response to the Rule 51(4) communication no longer applies.