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Monday, 23 December 2013

How to amend before the EPO

The IPKat has received correspondence from a number a kind informants, pointing out the small but highly practically significant change in practice recently announced by the EPO, that hand-written amendments are to be abolished.  The IPKat is delighted that none other than Derk (with an e not an i) Visser, esteemed author of The Annotated European Patent Convention, and also colleague of this Kat, accepted a commission to write a guest blogpost about this.  So with great pleasure, over now to Derk.


The EPO is moving toward a paperless office.

A new step in this process will affect most European patent attorneys.

The IPKat contemplates making
manuscript amendments
Up to now, the EPO has accepted handwritten amendments. When issuing a Rule 71(3) EPC communication, an examiner may pencil any amendments he proposes to make the case allowable in the Druckexemplar (who knows a proper English word for this, galley proof?) (see Guidelines H-III, 2.3). A patent attorney could also make small amendments in a document by scribbling in the changes. Handwritten amendments have been allowable according to the Guidelines, section A-III, 3.2 and A-VIII, 2.3 and have been most convenient, because the typography makes clear what the amendments are. They have even been recommended, as the filing of completely retyped documents is normally objected to for reasons of procedural economy because they have to be checked for correspondence with the original documents (H-III, 2.3; T113/92).

Over the years handwritten amendments have caused problems in that amendments of the examiner in the Druckexemplar were not clearly legible and amendments of the patent attorney in parts of the patent application were misread. As a consequence, the text of a granted patent based on such a handwritten amendments could be incorrect. The correction of such a text after the decision to grant has recently been made increasingly difficult if not impossible by decision G1/10.

In view of these problems, the EPO has decided to abolish handwritten amendments and corrections as per 01.01.2014. In a Notice of 8.11.2013 the EPO have published the strict application of Rule 50(1) EPC in conjunction with Rule 49(8) EPC, requiring that replacement documents of the patent application must be typed or printed; no more handwriting. As an exception in Rule 49(8), only graphic symbols and characters and chemical or mathematical formulae may be drawn or written by hand if necessary. The EPO must be able to capture all submitted documents electronically in such a way that it can deal with them using text-processing software.

As from 01.01.2014 the Druckexemplar will be produced electronically and will not have handwritten amendments anymore. The Notice does not state the form in which amendments will be presented and how the Druckexemplar will be sent to the party; it will probably be sent in paper form. Hence, the patent attorney must copy the acceptable amendments to his electronic version of the document and return it to the EPO, where the examiner has to compare documents again to see if no other amendments have been made other than those indicated by track changes. Such a process does not yet appear to improve procedural economy. What happens if the examiner has made a mistake in marking the changes, for example forgotten to switch on ‘track changes’? Even more reason to check the Druckexemplar very carefully.

If an error is spotted in the Druckexemplar, for example in an amendment of the examiner, one has to go through the process of a second Rule 71(3) communication. The grant procedure cannot be sped up by prepayment of the fees and filing of translations in response to the first Rule 71(3) communication; even a waiver will not help. If you have filed an amendment and have complied with all requirements, the EPO will still send you the second Rule 71(3) communication, simply asking you to confirm your previous submissions. (Note, that this is a truly exceptional case where the EPO ask such confirmation; usually your submissions are supposed to reflect your opinion without confirmation. The process of sending a second Rule 71(3) communication in such a situation has recently been confirmed by DG5.) 

The Notice of 8.11.2013 neither states the form in which the patent attorneys must submit amendments to documents. It does, however, mention that they must bring a laptop or similar device on which the amendments can be prepared during oral proceedings; even then parties can apparently not resort to handwritten amendments. The EPO will provide applicants and proprietors with electronic copies of their Druckexemplar or patent specification. It is not clear from the Notice, whether the electronic copies will be provided during oral proceedings only or also during written proceedings, the latter of which would solve the copying and checking problem of the previous paragraph.

The rooms made available for patent agents during oral proceedings generally contain computers which can read CD-ROMs, USB sticks, etc., together with printers which normally allow documents to be printed direct from USB sticks (underlining added by the IPKat). You may wonder how an agent would print his amended documents if he happens to have a room without computer or a printer that does not like USB sticks.

It is well known that the EPO does not appreciate computer viruses. Hence, your medium storing the documents should be free from them according to the Notice. What happens if your computer is attacked by a virus or breaks down because of end-of-life issues during oral proceedings? Is this the end of the amendments? Will there be a fall-back method for filing amendments?

The Notice gives the impression that it is a pre-announcement of changes to come in view of the many open ends. However, it is not a pre-announcement: the prohibition of handwritten amendments will enter into force already on 1.1.2014! Avid readers of the EPO website may have spotted that all offices of the EPO will be closed from 21.12.2013 to 1.1.2014. Merpel surmises that the EPO have sent most employees home to have a free hand to tool up the office for the introduction of hands-free amendments.

18 comments:

Harm van der Heijden said...

In the EPO announcement, I clearly read that we (EPA's) will no longer be allowed to file handwritten amendments after 1/1/14.

However, contrary to the comments by Mr. Visser, I don't read that EPO will start issuing fully electronically produced Druckexemplars per 1/1/14. They are working towards that holy grail.

So my guess is that those cryptic Druckexemplars will be with us for some time to come...

Anonymous said...

Considering that the EPO had to pay a nice penny to the printers for the conversion of the annotated Druckexemplar into a printed document, it is not difficult to see what was the motivation behind this change. A minimum of consultation and some advance notice would have been a good idea, though. As well as passing on some of the savings to the users...

Anonymous said...

What happens if your computer is attacked by a virus or breaks down because of end-of-life issues during oral proceedings? Is this the end of the amendments? Will there be a fall-back method for filing amendments?

In case amendments in prited form cannot be produced during the OPs, one of the following will likely happen, depending on the division involved and on the situation:

i) a procedure similar to the one carried out when an authorization is missing will be used: no decision will be taken at the end of the OPs and the applicant/patent proprietor will receive the minutes together with an invitation to supply the amendments in prited form; if the amendments in printed form are not filed within the deadline, the application will be deemed withdrawn under A94(4) EPC, or the patent will be revoked under A101(3)(b) for lack of compliance with R49(8) EPC.

ii) After an allowable set of (handwritten) claims has been reached, the proceedings will be interrupted so that one of the examiners can go back to his/her office, use the powerful tools of the EPO (i.e., Microsoft Word and a printer) to get the amendments in printed form and bring them back to the representative to date and sign so as to avoid the madness of i) above.

MaxDrei said...

Thank you, that anonymous at 20:34. This is what I too imagine will happen. Anything else strikes me as disproportionate and counter-productive.

Then again, the only Rule at EPO Oral Proceedings (rife with Chairman's discretion) is that something surprising, out of the blue, invariably occurs.

ex-examiner said...

When visiting a client in Korea a few years ago, their Reception had a room with a number of computers which we had to use to download any presentations etc. on electronic media into their system where it could be checked for viruses etc. before being run. All computers and data carriers had to be left with reception. Allowing third parties to connect their computers to your IT system doesn't seem particularly good practice.

When I was an examiner with the UK Patent Office, hand written amendments were certainly easier to review, and I am one oof those people who finds it difficlt to reliably check the accuracy of documents from a computer screen, especially a lap-top screen, preferring always to proof read a hard copy.

MaxDrei said...

I am one of those oldies who creates working pages with hand-written changes to the originally filed claims. In the margin I note where in the WO the verbatim text of the amendment is to be found.

I find such pages helpful and I am reasonably sure that some EPO Examiners find them just as helpful.

Do the new Rules prevent me showing the ED such working pages (in addition to whatever electronic documents I file)? I like to think that the don't.

Chris Mercer said...

You may be interested to know that both epi and CIPA have been making representations to the EPO about this in connection with oral proceedings. The message we are getting back is that the EPO has not completely banned handwritten amendments but will allow them as long as they are followed up in a short period by re-typed pages. This has not been confirmed officially and so we will need to see what occurs in practice. From personal experience in The Hague on 10th December, the EPO’s IT systems do not allow electronic amendments. The EPO’s PCs blocked access from a USB stick and the only printer I could find which accepted a USB stick would only print pdfs, not word-processed documents. If the EPO does not get its IT in order, which they have promised they will, there could be chaos.

Darren Smyth said...

Dear MaxDrei

I don't see handwritten amendments as indications of amendments and basis being banned - these are a different species of submission from the amendment itself. As you point out, they would presumably additional to the clean document that you file. They are mainly needed for checking compliance with Rule 137(4) EPC

http://www.epo.org/law-practice/legal-texts/html/epc/2010/e/r137.html

Dear Chris Mercer - thank you for your comment. How lovely it is when EPO notices turn out to mean in reality precisely what they say with the words that they use. 2014 will be upon us soon and doubtless more will be revealed.

Darren

Anonymous said...

One of the ever present dangers in submitting typed replacement pages is the introduction of typographical errors which may be very difficult to spot but which could lead to the invalidity of the amended patent. In OPs (especially after grant), hand-written changes are far more preferable, even if this entails an extra cost for the EPO.

Anonymous said...

This seems an odd measure for cost savings. The burden of converting swiftly-entered, easily-understood, and easily-identifiable manuscript amendments to OCR-ready typescript text, and verifying the conversion of the same, has been shifted from back-office clerical staff to Examiners, Chairmen and EPAs. Do contract back-office clerical staff really cost more to do this job? If they do, then I can suggest at least one cost saving worth making... the salary of the contracts officer who agreed such as abysmal outsourcing deal!

This approach can only increase the overall costs of the patenting process to the parties, since any cost saving by the EPO, and presumably consequently reduced fees, will be negated by the costs to the EPO and to the parties of the increased length of proceedings.

Since the EPO is non-profit, and exists to provide a public service, its cost decisions should be predicated on the impact of the overall cost to the users of the system. This is evidently not true in the current approach.

I prefer the sensible approach, used until now by some Divisions, of allowing the filing of handwritten amendments during the hearing, and then requiring submission of verbatim clean copies of those amendments within a two-month period after the hearing. This would seem to allow cost savings to be made, at least in terms of allowing the typing job to be given to the attorney's clerical staff, while remaining compatible with the production of a fully-OCR-able file copy of the amended application.

MaxDrei said...

Thanks Chris and Darren. One observes the US scene and marvels how many Chicken Little's there are there, running round declaring that the sky is falling. Until recent years, one would have thought such behaviour in relation to the EPO to be unnecessary. However, given the EPO's recent track record on rule-making, anything's possible.

I am optimistic though, and fondly imagine that, inside the EPO, there is intent to revert in 2014 to normal user-friendly service, albeit driven by a perceived need to modernise, to become within a reasonable timescale, a totally paperless Office. If so, Bravo EPO.

Anonymous said...

I think that the best solution would be a single text in the EPO Myfile area which can be shared and amended by both the examiner and the applicant/representative, so that they can always see in real time exactly what was amended, when and by whom.
This solution would work like the shared documents in Skydrive or Google Drive and, of course, would require an Internet connection at the EPO.

Anonymous said...

It used to be possible to file a sequence listing in both .txt and .pdf form using Online Filing, with a statement that they were the same.

Why does the EPO not offer the same option for the specficiation, perhaps with a reduced filing fee? The Applicant could save money on the filing fee by uploading a .txt or word version of the spec, with the "official" pdf version and a statement informing the EPO that they are the same, and the EPO could save money by not having to convert the pdf (back) into editable text format. All parties could then be happy that any amendments are made to a copy of the specification that has been approved by the Applicant. And anyone choosing to still file by post or fax would not be penalised (except for losing out on the reduced filing fee, which they do currently anyway).

Must be better than expecting the Applicant to check the Druckexemplar word-by-word to ensure that no errors/additional amendments have crept in...

Darren Smyth said...

Merpel has been prowling and she has heard this from a EPO source:

The electronic Druckexemplar tool roll-out is in progress, so it is likely that not every examiner will have access to it from 01.01.2014. In any case, as long as the amended text - irrespective of whether it comes from the applicant, or it is a proposal of the examining division - is typed or printed (which means, basically, that it can reliably OCR'ed) the requirements of Rule 49(8) EPC will be complied with.

Bart van Wezenbeek said...

If the EPO does not like handwriting anymore, would then now not be the correct moment to switch to computers on the EQE?

Tim Jackson said...

In the heat of contested oral proceedings, how practical is it to grapple with word processors, memory sticks and unfamiliar EPO printers on the spot? Especially if you go through several different auxiliary requests during the oral proceedings, responding to events as they happen.

I don't think the problems are limited to getting a usb stick to talk to an EPO printer. For example, have they considered that when you insert text in a Word document, the pagination regularly gets screwed up? So it's a hassle just providing replacement pages that start and end in the right places. Not to mention the hoops you have to jump through to get Word to correctly number a page '4a' between two existing page numbers '4' and '5'. (Writing it in by hand doesn't comply with the rule...)

None of this is insurmountable. We deal with it in our offices all the time. It's just a fiddle that you don't want to be faffing around with when the Opposition Division has given you 20 minutes to come up with amendments. They are champing at the bit wondering where you have got to, and you don't want to annoy them. Maybe you'd like to present two auxiliary requests, but really they only want to see one and might refuse discretion for more. Then you find that a line of text has spilled over onto the next page, and all the page numbers are wrong....

I think the chairmen of Examination and Opposition Divisions will soon get fed up that whereas previously they allowed the applicant/proprietor 20 minutes to produce amendments, now it takes 40 minutes because of the fiddling about with the technology.

It is suggested that in practice they will allow manuscript amendments, as at present, and set a time limit for a subsequently filed typed version. That is sensible, but it is not what the official notice says.

Nor am I sure that Examiners will be happy with setting such a time limit. They are under pressure to issue a final decision bringing the opposition to a close at the end of the oral proceedings. They want to say that the application meets (or does not meet) all the provisions of the EPC.

If they say it meets all the provisions except Rules 49 and 50, the decision is not final. What if the Opponent goes home, does a new search on the amended claim 1, and files some highly relevant prior art? Given that the opposition proceedings are not closed, does the Opposition Division ignore it and maintain the patent in an invalid form?

Ron said...

As a practical point, my understanding is that progams such as WORD may lay out documents according to the default printer that is specified on teh computer that you are using to read it, so page and line breaks will not necessarily be the same when you print out a WORD document on a different machine from that which the originator was using. it was problems like this that lead to the development of the PDF format (PDF = Portable Document Format: does what it says on the tin regardless of which computer you are using).

Anothert issue I have experienced is where English-language documents have been supplied from non-English-speaking countries using their local versions of WORD.

At one time we had particular problems with WORD documents originating from Korea, which were sometimes prepared using a font that our UK-specification computers and printers had problems rendering correctly. Sometimes a character would reproduce as an empty rectangle, sometimes (more difficult to detect) as a blank space. Sometimes it would look OK on screen, but not print in hard copy. There can also be problems with PDF conversion, as not all PDF converters can accurately reproduce the original text, one reason for the provision for providing a source copy as part of the EPO's electronic filing system.

Jake said...

Perhaps a portable type-writer would be appropriate for the technophobes or as a back-up.

I have received a Druckexemplar with hand amendments to claim 1 that were illegible to all, including the Examining Division (the Examiner author had unfortunately met with an accident). Being asked to approve an illegible claim 1 is preposterous.

For anything except OPs, typed documents (at least paper, preferably also electronic) would seem to be sensible. Procedurally, at OPs, I can imagine that Chairmen will exercise discretion to allow hand amendments at least temporarily for consideration.

I presume that a hand-written signature on the amended pages will still be required at OPs. Or has that to be printed or electronic as well?

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