Digital transformation of the EPO: legal changes and new online services

In addition, the EPO has digitized its internal workflows, moved to issuing electronic certificates of grant (as of April 1, 2022) and work is continuing to finally move to a fully digital patent granting procedure.

To this end, we understand that the EPO is planning several notable legal changes and new online services to accommodate changes in working practices under the umbrella of “digital transformation”.

Document submission requirements

The implementing regulations governing the presentation of documents and those governing the examination of these requirements reflect the era of paper-based procedures.

In order to allow greater legislative flexibility in the future, the EPO plans to delete certain provisions of the Implementing Regulations relating to presentation requirements and to delegate them instead to the President of the EPO. Changes to the presentation requirements can then simply be made by decisions issued by the President of the EPO.

The EPO is considering deleting Rule 46 EPC (governing the form of drawings) and amending Rules 49 and 50 (governing the form of the application and subsequently filed documents) to allow the President of the EPO to determine these requirements . Minor changes to subsequent rules will be made for consistency.

These changes are expected to come into effect in November 2022.

We understand that the President’s first ruling following the amendments is simply to reaffirm the deleted question from the Regulations. So while future changes may be implemented more quickly and more flexibly, the changes currently proposed are largely fundamental and should not result in dramatic practical changes at this time.

However, one of the possible consequences of these changes is that it may become possible to file and publish color drawings with the EPO. However, we understand that this may have to wait for the EPO to adapt its software systems to allow for end-to-end processing, as well as potential international consultation and alignment.

Transmission of search reports

The EPO is required to send the applicant copies of any document cited in the European search report. While the EPO’s digital mailbox service is widely used, a huge amount of paper is still sent by post every year.

Additionally, unwritten prior art such as video clips present additional challenges.

To modernize this process, the EPO plans to make citations available for download from a central web-based platform on demand. To enable this implementation, the EPO plans to change the wording of Rule 65 EPC so that the cited documents are “made available” rather than the current requirement of “transmission”.

This change is also expected to come into effect in November 2022.

Veronica J. Snell