When filing amendments or corrections in response to a communication under Rule 71(3) EPC (notice of intention to grant), it is now possible to expressly waive the right to a further such communication.
Until recently, if an applicant for a European patent did not completely agree with the text intended for grant (“Druckexemplar”) and wanted to request further amendments, however minor, the only way to proceed was by issuance of a new Rule 71(3) communication with a new 4-month period for reply. There was inevitably a delay in issuing the new text and a cost in going through the approval procedure a second time. This was frustrating if there were mere typographical errors to be corrected.
As of 1 July 2015, the option of waiving a new Rule 71(3) communication is available. If taken, the EPO will consent to the waiver and proceed with the issuance of the decision to grant if:
– the amendments or corrections requested are allowable and do not require resumption of substantive examination proceedings and
– all formal requirements are fulfilled within the non-extendable period given in the communication (normally 4 months).
Any waiver expressed in response to a R71(3) communication is only effective in respect of the following R71(3) communication.
If the Examining Division does not consent to the waiver, the examination procedure will resume (e.g. when the amendments raise new issues), or a further Rule 71(3) communication will be sent (e.g. if further examiner amendments are necessitated by the applicant’s amendments).
This new option is proving attractive to clients who are faced with minor amendments or corrections in the final text and want to complete the grant process promptly and efficiently. It is also useful when we have instructions to proceed but the process of translating the claims (e.g. from English into French and German) shows up inconsistencies or ambiguities in the approved text.
On the other hand, requesting a second communication under Rule 71(3) is the wise approach if amendments are extensive. The text can be completely finalized before having to complete the formal requirements such as paying the grant fee and filing the required translations.
If we are to use this process, we need instructions to proceed in good time before the end of the 4-month period for response. This is because we have to have the corrected/amended text translated into the other two languages and we need instructions to pay the grant and printing fees at that time. If we receive instructions close to the deadline such that translation of the claims is likely to incur urgency charges, we will typically file the amendments, request a further communication and use the new period to prepare the translated claims.
Waiving a further R71(3) communication means forgoing an opportunity to check the final text of the patent before grant, so it is a saving in time and money that carries a certain risk that the EPO will not implement the final changes correctly. It is not a process to be recommended if amendments are complex.