Home » Patents » EPO issue practice note on handwritten amendments

EPO issue practice note on handwritten amendments

Keltie LLP

K2 IP Limited

About IPcopy

IPcopy is an intellectual property related news site covering a wide variety of IP related news and issues. We will also take the odd lighthearted look at IP. Feel free to contact us via the details on the About Us page. Disclaimer: Unless stated otherwise, the contributors to IPcopy (the "IPcopy writers") are patent and trade mark attorneys or patent and trade mark assistants at Keltie LLP or are network attorneys at K2 IP Limited. Guest contributors will be identified. This news site is the personal site of the contributors and is not edited by the authors' employer in any way. From time to time however IPcopy may publish practice notes, legal updates and marketing news from Keltie LLP or K2 IP Limited. Any such posts will be clearly marked. This news site is for information purposes only. Information posted to this news site is not legal advice and should not be taken as such. If you require IP related legal advice please contact your legal representative.

epologoAs we all know the EPO recently changed its procedure in front of first-instance departments such that handwritten amendments are no longer accepted in documents replacing parts of the European patent application. As well as written communications this change also applies to amendments made during oral proceedings and during oppositions.

The EPO website has now been updated with a list of frequently asked questions directed at some of the issues and questions that have been raised since the practice change was announced.

The FAQs explain that the change is tied into the EPO’s modernization of its IT systems and the need for documents to be available in a form recognizable by OCR software. Failure to follow the new practice will result in documents being considered formally deficient and applicants will be given an opportunity to remedy the deficiency within a given time limit. If the deficiency remains (after the “remedy” time limit has expired) then the EPO may refuse or deem the application withdrawn.

Handwritten amendments may still be used, e.g. in an “information only” copy of the specification that is submitted in addition to the clean copy of the amended specification documents. However, the clean copy of the specification documents needs to be free from any such handwritten amendments.

As far as oral proceedings are concerned the practice notice notes that handwritten amendments may still be used as a basis for discussion during the proceedings but once agreement has been reached then a clean copy needs to be submitted and no final decision will be possible until that is done.

If oral proceedings are held by video conference then documents can be submitted by email according to the EPO President’s Decision of 20 April 2012. (Note the FAQs page currently links to the wrong Decision).

The FAQs are, of course, silent on the concerns raised within the EPO itself with regard to the new procedure. At a recent EPO/epi meeting it was noted that the Boards of Appeal don’t appreciate the new procedure on handwritten amendments as they believe that the opportunity (either by accident or design) of introducing further amendments that the Board/appeal party might overlook is a negative that outweighs the positives of the new practice.

Mark Richardson 1 May 2014


Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s

%d bloggers like this: