Introduction
Oral proceedings held as videoconference
Consultations with examining division
Comment


Introduction

Due to its vulnerability from a security perspective, communication via email is not an allowed means for a legally binding exchange of documents with the European Patent Office (EPO) apart from in a few exceptional cases.

At present, email is an admissible filing means only for the submission of subsequently filed documents as referred to in rule 50 of the European Patent Convention (EPC) during consultations and oral proceedings held by videoconference.

The EPO envisages several settings in which a communication via email is possible. In particular, the Guidelines for Examination in the European Patent Office(1) set out a framework regarding the use of email as a communication means. The party communicating via email with the EPO needs to be well aware that these email correspondences are not considered confidential and usually find their way into the public online register of the EPO.

Oral proceedings held as videoconference

Where oral proceedings are held as a videoconference, documents filed subsequently as referred to in rule 50 of the EPC must be filed by email.(2) This also applies to authorisations.

All submissions made by email during a videoconference are annexed to the minutes unless the following apply:(3)

  • exceptions under rule 144 of the EPC; and
  • the decision of the president of the EPO dated 12 July 2007 concerning documents excluded from file inspection.

A confidentiality note, which is routinely included in emails, is not to be regarded as a request to exclude these submissions from the public file.

As with written submissions filed by any other means than email, a party may request to exclude certain documents from file inspection. Any such request must be duly substantiated and point out in which specific way the legitimate personal or economic interests of the party are affected and the consequences thereof, rather than merely making a statement concerning a party's interests in general. Also, it is recommended to mark any requests for exclusion from file inspection clearly, allowing them to be immediately identified as such and to be provisionally excluded from inspection, pending a final decision on the request.

When a submission is to be only partially excluded from file inspection, only the parts or passages in question are excluded. The rest of the submission remains public.

Consultations with examining division

Having started as a pilot project by the EPO, notification by email during examination proceedings in relation to scheduled oral proceedings is now established practice. Email is also increasingly used when communicating with an examining division without oral proceedings being scheduled. In most cases, the email correspondence is initiated by the primary examiner when the obstacles for a grant of the patent are considered easily surmountable.

As mentioned above, apart from the filings during a videoconference, email has no legal effect in proceedings under the EPC and thus cannot be used to validly perform any procedural act. In particular, it cannot be used to comply with time limits.(4) If, for instance, the applicant would like to submit new requests and/or amended documents shortly before oral proceedings, this should be done by electronic filing or fax. Experience shows that documents submitted via electronic filing are normally visible in the electronic file on the same day.

The Guidelines state that exchanges by email may be useful:

  • when arranging a date for a consultation;
  • during a consultation, when possible amendments to claims are being discussed – the applicant might want to communicate these immediately without submitting them formally; and
  • shortly before oral proceedings – to send an electronic copy of amended claims in addition to the official submission made (for example) by fax. This would ensure that the examining division gets the documents well in time for preparation of the oral proceedings.

Except in cases where it is a valid filing means,(5) neither the examiner nor the applicant should use email without having previously agreed to this – for example, during a consultation. There must be mutual agreement between the examiner and the applicant to such use if the content of the email goes beyond the mere arranging of a date for a consultation or oral proceedings.

If an examiner receives an email from an applicant concerning procedural requests or addressing any substantive issues without previous agreement, they cannot simply ignore it – the content must be put in the official file.(6)

It is mentioned in the Guidelines that for non-published applications, confidentiality issues should be carefully considered and substantive matters should not form part of any email correspondence concerning such applications.

If email is used, the EPO intends that the exchange of emails is properly documented in the file. This should be done by sending the result of the consultation to the applicant for information with no time limit. This ensures that the exchange is included in the public part of the file and that the applicant is aware of this.

Submissions filed by email during a consultation or during oral proceedings held as a videoconference, including all attachments, should be annexed to the minutes.(7)

It may be the case that not all emails are fully mirrored in the register. However, a party should be aware that every statement made in an email exchange could end up in the public online register. This is an important issue to keep in mind, in particular where counterparts in the United States are concerned.

In US patent trials, parties usually specifically request all rulings, pleadings and supporting documentation from any related foreign proceedings, including court and patent office litigations, oppositions and patent prosecutions for the purposes of discovery proceedings. These documents may be considered to contain critical admissions or statements contrary to the positions taken in the US litigation. Thus, it should be kept in mind that any email correspondence with the EPO might form such critical documentation.

Further, the examiner may cite a new prior art document for the first time in an email exchange. This new prior art must be dealt with properly according to the US information disclosure requirement, if there exists a US counterpart.

Comment

Although email as a communication means with the EPO has its limited areas of application and should be used with caution – in particular, in view of confidentiality – it can still be a valuable tool for facilitating and speeding up grant proceedings.

Many primary examiners are committed and responsive, establishing a helpful personal contact in order to reach an agreement with the applicant.

For email communication during videoconferences, there is of course no alternative anymore.(8)

For further information on this topic please contact Sabine Koch at Grünecker by telephone (+49 89 21 23 50) or email ([email protected]). The Grünecker website can be accessed at grunecker.de.

Endnotes

(1) C-VII.3.1-3.3.

(2) See OJ EPO 2020, A71, article 1(1)).

(3) See A‑XI, 2.3 and Special edition No. 3, OJ EPO 2007, J.3.

(4) See OJ EPO 2000, 458 and A‑VIII, 2.5.

(5) See C‑VII, 3 and E‑III, 8.5.2.

(6) See also T 599/06.

(7) See E‑III, 8.5.2 for details.

(8) See OJ EPO 2020, A71, article 1(1).