Amending After Allowance: Upcoming Change in Procedure

This article was included in our Winter 2010 edition of Inside IP magazine.

It is possible, in certain circumstances, to amend the claims of a European patent application after receiving a notice of intention to grant, also known as a Rule 71(3) EPC Communication.  Although the discretion of the Examining Division of the European Patent Office (EPO) is required, they are usually amenable if the requested amendments are made for good reason, if they do not contravene the EPC and if examination of the amendments is not too onerous.  The current procedure is, however, not particularly efficient.  It involves filing French and German translations of the amended claims in response to the notice, i.e. before the Examining Division has considered the amendments.  Should the amendments not be allowed for any reason, further claims translations are required.  Also, if the Examining Division does not allow the amendments and the applicant does not approve the claims originally proposed by the Examining Division, the EPO can refuse the application without re-entering the examination proceedings.

Amendments to the rules were announced by the EPO on 26 October 2010.  These will accommodate simpler and less risky case handling when amendments are filed in response to the notice of intention to grant, once they take effect on 1 April 2012.

The amendments add a new Rule 71a and replace sections 3 to 11 of Rule 71 with new sections 3 to 7.  Put simply, amended Rule 71 will allow applicants to request reasoned amendments or corrections without simultaneously filing translations of the claims into French and German.  A new notice of intention to grant will be issued if the Examining Division approves the amendments/corrections, and otherwise the rule dictates that the examination proceedings will be resumed.

We welcome these changes, which should have the effect of smoothing the procedure as well as reducing overall costs when amendments are required at the allowance stage.

Of note in new Rule 71a is a provision that allows the Examining Division to resume the examination proceedings at their own initiative at any time up until the decision to grant.   We hope that this will not be used very often.

Paul Derry 29 Nov 2010

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