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Friday, 16 December 2011

EPO goes (even more) electronic

The EPO has announced that it will start phasing in fully electronic communications -- i.e. delivered electronically to the applicant or representative without any follow-up paper copies -- for the following communications:

  • the extended European search report pursuant to Rule 62 EPC - i.e. the European or partial European search report (Article 92 and Rules 61 and 63 EPC) plus the European search opinion - or the declaration of no search (Rule 63 EPC)
  • the international search report (Article 18 PCT), together with the written opinion under Rule 43bis PCT 
The service will be expanded gradually, with the ultimate goal of including all EPO formal communications.

The IPKat never looked back, but his canine
acquaintances missed chasing the postman.

Photo by Will Brenner
So how will it work? The electronic communication will arrive in the user's electronic mailbox and will contain a link to the notified document, in the electronic dossier in an EPO database. Importantly for users, and for the IT staff who maintain their electronic docketing systems, date calculations will remain unchanged from the present "10 day" regime under Rule 126(2), so that notification is deemed to have been effected at the latest on the tenth day after transmission of the electronic communication to the Mailbox, unless the communication arrives later or not at all.

In the initial phase, professional representatives holding an EPO smart card and who have activated their electronic mailbox may inform the EPO that they wish to take part in the start-up phase by mailing support@epo.org. A second notice from the EPO issued today gives more details on this (and other EPO electronic services).

Reading the two notices together the IPKat admits to being slightly confused on one point. The service was launched on December 15 in a test phase, and it appears there is a pilot group of users from both private practice and industry who have access right away. While the notices suggest that other users may ask to join the test phase, it appears that they will only be admitted as of the first quarter of 2012, i.e. the launch yesterday was a closed launch. If the IPKat has read this wrong and the service is available immediately to all professional representatives who request it, perhaps someone from the EPO can clarify this in a comment.

So that's what they looked like: a 1980s era
British Telecom telex machine
If the system will indeed be limited to a pre-selected group, at least until the new year, it is again unclear when it will open up to willing users. The "first quarter of 2012" is ambiguous (January 2nd? March 30th?), and perhaps this is deliberately the case. After all, it would be understandable if the EPO did not want to commit to a specific date in the first quarter of 2012 until the guinea pigs had given the wheels a good shake and spin, and any problems had been fixed. Again, if anyone in the know can clarify, it would be appreciated.

Those niggles aside, the IPKat welcomes this development. The EPO has consistently been ahead of the curve in its electronic offerings, and the software it offers users is usually pretty robust and well thought out. Increasing the options for users to send and receive communications is all good, provided that they are not prematurely forced to abandon their preferred technology (a good model to follow here is the EPO finally switching off its dusty telex machine on September 1, 2004 when this technology had all but vanished from daily life).

15 comments:

Rimbaud said...

Good news indeed.
Amazing that the notifying electrons will make the ten-day trip before reaching the EP Attorney's Mailbox.

Besides, say goodbye to reviewing ground of R7/09: "statement setting out the grounds of appeal
never notified to respondent/patent proprietor"

Almost Emeritus said...

1. No doubt retaining the 10 day rule ensures that users of the new system will not be at a disadvantage relative to non-users.

2. It makes good sense to try the system out on a pilot group to iron out any bugs before going live.

The patent department of the firm I used to work for was involved in the trials of the original electronic filing scheme which, as originally planned, would have had the EPA doing everything himself. It was feedback from ourselves, and no doubt others, that led to the present arrangement where non-EPA personnel are issued with smart cards to allow them to perform the essentially clerical steps.

Anonymous said...

I wondered what the UKIPO's new electronic hardware for ipsum looked like. Thanks for sharing the pic.

The 10-day rule has to be kept as the actual date of notification of a document didn't apply under the paper system either (unless it was later than 10 days). Who's to say an attorney doesn't check his email every day and if so, when is the actual date of notification.

It is a nice little quirk of the system, which we have all come to embrace and would miss if it goes.

Anonymous said...

For a busy multiple attorney office it is essential to have a joint inbox for all the attorneys accessible by multiple clerical staff, so that all the due dates can be reliably logged.

Does it have that?

re Rimbaud above - the electrons may take more than 10 days. http://en.wikipedia.org/wiki/Drift_velocity gives an example for the drift velocity of the electrons in a wire as 0.00028 m/s. So I will mark up the notifcation period at 104 years! So which city am I in?

Anonymous said...

I guess you are lucky to be sitting in Cluj, the beautiful cybercapital of Transylvania (RO).

Anonymous said...

I have a vicious question... If communications can now be notified electronically, what is the point of obliging applicants from without EP-land to be represented?

Does your, say, US or JP multinational company really has less knowledge of patent law in general, and EP-law in particular, than the private gizmo inventor who happens to reside in a member country? And what's the point of being represented, when many a EP-rep are content with merely channeling their foreign correspondents?

It's a good thing that Article 133 is set in reinforced concrete, since it can only be changed by a full diplomatic conference...

Rimbaud said...

re Anonymous of December 16, 2011 2:04:00 PM
104 years?!? Gosh!
Here comes the new submarine patent: "Hey, folks, as proven by my electronic Mailbox, I did receive your refusal, but only on 16.12.2115. Could you please resume the examining procedure?"

Rimbaud said...

re Anonymous of December 19, 2011 4:05:00 AM
Vicious question indeed.
How did our fellow US Patent Attorneys answer, using EFS-Web and Private PAIR?

ex-examiner said...

Anon 4.05.00 might be surprised by the number of instances I used to come across of very large US companies who regularly prior published their inventions in journals, evidently unaware of the fact that most of the rest of the world does not have a grace period.

Anonymous said...

All patent offers users should make use of authorised representatives. Laypersons are a pain and a drain on the system and are heavily subsidised by other users.

"And what's the point of being represented, when many a EP-rep are content with merely channeling their foreign correspondents". Many a non-EP agent insists on their EP agents merely forwarding their instructions direct to the EPO without any value-added contribution(ie without ensuring the response is done properly and addresses the examiner's concerns). Something to do with agents wanting to make the profit out of their client and not share the 'spoils' with EP agents. Many also think they know better in any case.

Personally, I'm all for a spot of protectionism. Bring on the trade war!

To be fair to our US friends, there is no need for many to realise publication destroys their chance of getting an overseas patent, because to them, overseas is just Hawaii! Sorry.

Anonymous said...

The way this has been designed seems a bit unfair for the users (are they still called "customers" by the EPO?).

First, the analogue to R.126(2),second sentence, is missing completely.

On the other hand, the Mailbox is outside the user's sphere of influence. How can the transmission to such a place have legal consequences for the user?

For example, what if the Mailbox-Servers are unreachable for more than ten days? Is that really absolutely impossible?

I think the polling-approach of delivering legal documents has not been thought to it's very end by the EPO here.

Anonymous said...

I have spoken to the EPO about the new system, and, although I am not participating in the pilot, have been given some useful information by them.

Although the EPO refers to communications being sent to a mailbox, the mailbox is, in fact, a web portal. Communications will not be sent by email. They will appear in the portal for you to access at your convenience so long as you have your smart card plugged in.

One of the key features of the new system is that a firm can have a central 'mailbox' wich can be administered by an administrator who is not an attorney.

Once a communication is placed into the 'mailbox', you will not be able to argue that the communication was not delivered.

Anonymous said...

> Once a communication is placed into the 'mailbox', you will not be able to argue that the communication was not delivered.

That's exactly the problem I meant. It's not fair. You cannot be absolutely sure to have access to the web portal within ten days (e. g. denial-of-service attacks against the web portal, provider problems) . Besides, any flaws in web transmission (yes, encryption is by principle breakable) are in the user's responsibility. There are no provisions about authenticity (digital signatures).

Anonymous said...

So you don't see it until the eleventh day. Get over it. Buy some better equipment. Get some better IT people. Use the EPO notification service in addition. Manually go to the EPO register and check all of your cases on a weekly basis.

It's all a lot more reliable than mail servies and internal company post rooms.

What surprises me most, is the fact that the KAT accepts blog comments by letter and that he gets such timely deliveries so soon before Christmas.

Anonymous said...

> It's all a lot more reliable than mail servies and internal company post rooms.

That's not the point. The point is to provide for cases when even "more reliable than mail services" will not have been enough. Postal delivery by registered letter makes sure that the "sphere" of the recipient is reached. A web portal or whatever on an EPO's server is _not_ in the sphere of the recipient.

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