Communication with the EPO via email
In our everyday working life, emails have become one of the most important means of communication – e. g. with clients, outside counsels, sub-contractors, or colleagues. Emails are fast, convenient, and comfortably familiar to most of us. However, 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 a few exceptions.
At present, email is an admissible filing means only for the submission of subsequently filed documents as referred to in Rule 50 EPC during consultations and during 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 (C-VII.3.1-3.3) give a framework regarding the use of emails as a communication means. As will be seen from the following, 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 a Videoconference
Where oral proceedings are held as a videoconference, documents filed subsequently as referred to in Rule 50 EPC must be filed by email (see OJ EPO 2020, A71, Art. 1(1)). This also applies to authorizations.
All submissions made by email during a videoconference are annexed to the minutes unless the exceptions under Rule 144 EPC and the decision of the President of the EPO dated 12 July 2007 concerning documents excluded from file inspection apply (see A XI, 2.3 and Special edition No. 3, OJ EPO 2007, J.3). 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 with any other means than email, documents that a party wishes to be excluded from file inspection, may be excluded from file inspection on request. Any such request needs to be duly substantiated and point out in which specific way the legitimate personal or economic interests of the party are affected and what are the consequences thereof rather than merely making a statement concerning a party's interests in general. Also, it is recommended to clearly mark any requests for exclusion from file inspection, 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 excluded from file inspection only partially, only the parts or passages in question are excluded, while the rest of the submission remains public.
Consultations with the 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. Also without oral proceedings being scheduled, when communicating with an examining division, email is meanwhile increasingly used. 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 and, in particular, cannot be used to comply with time limits (see OJ EPO 2000, 458 and A VIII, 2.5). If, for instance, shortly before oral proceedings, the applicant would like to submit new requests and/or amended documents, 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 following examples of cases where exchanges by email may be useful are given in the Guidelines:
(i) arranging a date for a consultation
(ii) if during a consultation possible amendments to claims are being discussed the applicant might want to communicate these immediately without submitting them formally
(iii) shortly before oral proceedings: sending an electronic copy of amended claims in addition to the official submission made e. g. 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 (see C VII, 3 and E III, 8.5.2), neither the examiner nor the applicant should use email without having previously agreed to this, e. g. 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, such an email cannot simply be ignored but must be dealt with, ensuring that the content is put in the official file (see also T 599/06).
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.
In case 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 (see E III, 8.5.2 for details).
It is our experience that not all emails are always 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 US are concerned.
Firstly, 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.
Secondly, on rare occasions, the examiner cites a new prior art document for the first time in an email exchange. It has to be made sure that this new prior art is dealt with properly according to the US information disclosure requirement, if there exists a US counterpart.
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 the 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 (see OJ EPO 2020, A71, Art. 1(1)).
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