Decision of the Vice-President Legal and International Affairs (Directorate-General 5) of the European Patent Office dated 19 August 2021 concerning the user area pilot project

In accordance with Article 12 of the decision of the President of the European Patent Office (EPO) dated 11 March 2015 concerning the pilot project to introduce new means of electronic communication in EPO proceedings (OJ EPO 2015, A28), a user area pilot project will be launched. Pilot participants will receive notifications via Mailbox and may submit procedural requests, perform other procedural acts and file accompanying documents in the user area, subject to the applicable provisions of the European Patent Convention (EPC) and Patent Cooperation Treaty (PCT) and this decision.

Article 1

Scope of the user area pilot

1. Access to the following services is provided upon login to the user area:

(a) electronic notification via Mailbox;

(b) electronic filing, as specified in Article 5;

(c) viewing of the application portfolio; and

(d) following further announcement, further services.

2. Initially the services in paragraph 1 will be limited to certain functionalities. Functionalities may be added following further announcement.

3. The availability of the services provided in the user area may be limited to specific categories of pilot participants. At the start of the pilot access to Mailbox will be available to professional representatives, legal practitioners (Article 134(8) EPC) and applicants who have their residence or place of business in an EPC contracting state, provided they have activated Mailbox. At the start of the pilot viewing of the application portfolio and the electronic filing services will be available to European professional representatives only.

Article 2

Start of the user area pilot

The user area pilot starts on 2 November 2021.

Article 3

Conditions for participation

Any user with a smart card who has activated Mailbox may participate in the user area pilot following registration and subsequent invitation by the EPO.^[ 1 ]

Article 4

Electronic notification

1. Electronic notification is effected by electronic communication to Mailbox. Pilot participants will be able to access Mailbox via the user area or through the existing Mailbox service.

2. Article 9 of the decision of the President of the European Patent Office dated 11 March 2015 concerning the pilot project to introduce new means of electronic communication in EPO proceedings (OJ EPO 2015, A28) applies mutatis mutandis to electronic notification via Mailbox and access via the user area.

Article 5

Electronic filing

1. Via the user area, pilot participants may perform procedural acts within the prescribed period in reply to a communication from the EPO (“tasks”); file procedural requests which are not subject to a period and not in reply to a communication from the EPO (“actions”); and submit documents accompanying these tasks and actions. A list of pending tasks is displayed in the task menu and indicates the final date for performing each of them.

2. Any accompanying documents must be filed in PDF, TIFF or DOCX format. Documents in PDF or TIFF format must comply with the definition of these formats provided in the Administrative Instructions under the PCT, Part 7 and Annex F.^[ 2 ] Documents in DOCX format must comply with the format definition published by the EPO.^[ 3 ]

3. Procedural acts performed by pilot participants will be reflected in an electronic document automatically generated within the submission session.

4. The document referred to in paragraph 3 and any accompanying documents must be authenticated by the pilot participant. To do so, they must select the option provided for authentication and submission. Documents authenticated in this way are deemed to meet the legal requirement for signature.

5. The document referred to in paragraph 3 and any accompanying documents will be added to the file of the corresponding patent application or patent and made available for public file inspection in accordance with Article 128 EPC.

6. Initially pilot participants will only be able to reply to the communication about the intention to grant (Rule 71(3) EPC). This includes requesting the correction of errors in the application’s bibliographic data following the verification under Rule 71(5) EPC.

7. Following further announcement, actions and additional tasks may be added, including but not limited to:

(a) the reply to a communication under Article 94(3) EPC;

(b) the reply to the extended European search report (Rule 70a EPC);

(c) submissions in preparation for oral proceedings in examination (Rule 116 EPC);

(d) requesting the correction or update of bibliographic data;

(e) requesting the registration of a transfer of rights (Rule 22 EPC); and

(f) giving notice of withdrawal from representation.

8. The inclusion of a procedural act in the task menu is a courtesy on the part of the EPO. Pilot participants may not invoke the omission of a task.

9. The EPO will electronically acknowledge receipt of documents filed via the user area following their successful submission. The acknowledgement of receipt will be provided within the submission session and digitally signed by the EPO.

10. The regulations concerning the electronic filing of documents apply mutatis mutandis to any filing in accordance with paragraph 1.^[ 4 ]

Article 6

Viewing of the application portfolio

Viewing of the application portfolio in the user area allows European professional representatives to inspect the files of the European patent applications and granted European patents for which they are appointed, including unpublished European patent applications, in accordance with Article 128 EPC and Rule 144 EPC. Access to the My Files service is unaffected by participation in the user area pilot project.

Article 7

Formal and technical requirements

The formal and technical requirements to be met are indicated in the user area and the accompanying documentation made available to users.

Article 8

Existing methods of filing documents, notification and file inspection

Services in the user area pilot are without prejudice to the existing methods of filing documents, electronic notification and file inspection.

Article 9

Changes to the user area pilot

Following further announcement, the EPO may change the starting date of the user area pilot, limit its scope or otherwise change it, in whole or in part, or discontinue it.

Done at Munich, 19 August 2021

Christoph ERNST

Vice-President Legal and International Affairs (Directorate-General 5) of the European Patent Office