< Back to latest news & events

News

Changes to the procedure for remedying patent applications at the EPO

October 2022

From 1 November 2022, the EPO has announced changes to the procedure for remedying patent applications that contain parts that have been included erroneously and updated the procedure for filing missing parts of a patent application.

At present time, the EPO only allows filing of missing parts of a patent application (e.g. drawings, sections of a description) under Rule 56 EPC, which the Legal Board of Appeal interprets narrowly. Under the current Rule 56 EPC, a patent application may retain its priority claim from an earlier patent application, if the filed missing parts of a patent application are:

  1. ‘Completely contained’ within the earlier patent application (which the patent application in question claims priority from); and
  2. Filed within two months of the date of filing of the patent application, or from the date of the relevant communication from the EPO.

If Rule 56 EPC is not complied with, the filing date of the patent application may be amended to the date that the missing parts of the patent application are filed. This re-dating penalty generally results in any potential priority claim that the patent application may have held, being pushed back, potentially affecting the patentability of a patent application.

In contrast, the EPO does not currently have any active procedure to remedy occurrences where parts of a patent application have been filed erroneously.

New Rule 56a EPC

Though undesirable, occasionally through human error, mistakes may occur during the filing of a patent application, resulting in parts of a patent application being included erroneously (e.g. drawings containing unwanted, confidential information) or containing errors (e.g. drawings with unintended visual issues). In order to remedy these mistakes when they do occur, a new EPC regulation, Rule 56a EPC, on correcting erroneous filings will enter into force on 1 November 2022.

Rule 56a EPC aligns the EPC with Rule 20.5bis PCT and allows the replacement of erroneously filed application documents (e.g. drawings, sections of the description) for patent applications filed on or after 1 November 2022. It will thus offer an equivalent to the PCT procedure, allowing the EPO, as the receiving office, to fully apply the PCT provision.

Similar to Rule 56 EPC, in order to claim priority from an earlier patent application and therefore avoid the aforementioned re-dating penalty, filed replacement parts must also be ‘completely contained’ within an earlier patent application, and filed within two months of either the date of filing the patent application or the date of the relevant communication from the EPO. In contrast to the current Rule 56 EPC, the patent application must, however, have claimed priority to the earlier patent application at the date that the patent application was filed.

Rule 56(3) EPC

As of 1 November 2022, Rule 56(3) EPC is to be updated to state that a priority claim to an earlier patent application must be made on the date that the patent application in question was filed, if it is used to file a missing part of a patent application. If a priority claim is added thereafter, under Rule 52(2) EPC, it cannot serve as a basis for filing a missing part of a patent application. As such, the applicability of Rule 56 EPC is to be restricted by this update.


This article was prepared by HGF Trainee Patent Attorney Theodore Jemmott.

Latest updates

Celebrating Success - Director Promotions

We are delighted to announce that 9 of our team have been promoted to director effective from today, 1 December 2023. These promotions are effective from today, 1 December 2023 …

Read article

New Blog Series: IP Ingredients, Part 1: Can you patent a recipe?

A patent is a legal right that enables the patent holder to prevent others from making and using their invention in the country where the patent is granted.  To many …

Read article
Event - 20th January 2021

HGF & Shiga Webinar Recording: When "Please amend to fall into line with the granted claims in the US" might not work in Europe and Japan

“Please amend to fall into line with the granted claims in the US” is a phrase generally received with caution from attorneys practicing in non-US jurisdictions. The principle cause for …

Event details

High Court’s AI Patent Ruling: A Turning Point for the Patentability of AI?

A recent decision by the UK High Court has delivered a highly favourable verdict for AI innovators, which could change the way that the patentability of AI-related inventions is assessed …

Read article

PRESS RELEASE - HGF Appoints new Chair of the Board: Formerly Head of Engineering, Lucy Johnson

HGF announced a new Chair to its Management Board, Lucy Johnson. Lucy was previously head of the firm’s Engineering Group.  Effective immediately Lucy succeeds Jason Lumber who held the position …

Read article

New Practice at the EPO: Divisional Applications and Sequence Listings

Safeguard measure: Excess page fees on ST.25 sequence listings included as part of a divisional application to be waived by the EPO. Following the implementation of WIPO Sequence standard ST.26, …

Read article