Waiving the right to a further communication under Rule 71(3) EPC
When the EPO informs the applicant of the text in which it intends to grant the European patent, applicants may approve the text, disapprove the text or file amendments or corrections.
If amendments or corrections are filed normally a new communication of intention to grant will be issued.
From 1 July 2015, applicants are being offered an additional option, which is to explicitly indicate that they wish to waive their right to receive a further communication (see Notice). Provided that certain conditions are fulfilled within the period given in the communication the waiver will be deemed filed.
How to waive the right to receive a further communication under Rule 71(3)
The conditions applicants must fill within a (non-extendable) four-month period are:
- Expressly state the wish to waive the right to receive a further Rule 71(3) communication (no special form is needed)
- File a translation of the claims
- Pay the fee for grant and publishing
- Pay any excess claims fees not already paid
- Identify any amendments or corrections and, where applicable, indicate the basis for them in the application, together with the relevant pages of the containing the amendments or corrections
Provided the conditions are fulfilled, the applicant is deemed to have approved the grant of the patent as amended or corrected and to have verified the bibliographic data.
It should be noted that each waiver expressed in response to a Rule 71(3) communication is only effective in respect of the next Rule 71(3) communication. So, if a further Rule 71(3) communication is issued, then a further waiver would need to be filed. Applicants may only request retraction of the requested waiver up to the moment the decision to grant the European patent is handed over to the EPO's internal postal service.
If a waiver is not deemed to have been consented to by the EPO, the applicant will either be informed that the examination procedure is being resumed or, depending on the circumstances of the case, will be sent a further communication under Rule 71(3) .
The waiver is only of relevance to applicants who are filing amendments or corrections in response to the text intended for grant. Where these are to be filed, including the waiver may result in time saving of a few weeks, but this should be balanced with the loss of opportunity to review the final text that will be published in the European Patent Register. The EPO will not make any further amendments of its own initiative (not even relating to capital letters or language errors) even if it can reasonably expect the applicant to accept them.