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EPO putting applications in the renewal grace period on hold?

Keltie LLP

K2 IP Limited

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epologoThe EPO apparently has a new internal procedure that debuted at some point in the last year which applies when a European patent application enters the six-month grace period for payment of an overdue renewal fee.  Once this happens the case file is apparently put on hold so that the Examiner is unable to work on it until the renewal fee has been paid.

IPcopy has heard that a colleague recently tried to briefly discuss a case with an Examiner to see if the claims looked in good shape from the Examiner’s point of view and also when the next exam report might issue. However the case in question was in the grace period for the renewal payment and so the Examiner was prevented from even opening the file to answer what were relatively basic questions.

Under previous arrangements EPO Examiners were apparently able to work on cases until 5 months after the missed renewal date (i.e. within one month of the end of the 6 month grace period) and even in the last month an Examiner was able to take a brief look at a file.

Apparently, this is not now possible and an applicant hoping to receive either an exam report or some other indication on the allowability of the claims before deciding whether to pay the renewal fee now has no option other than to pay the renewal fee.

IPcopy can appreciate that the EPO may have seen large numbers of cases that were entering the grace period and then were subsequently dropped once the applicant received an EPO work product. However, on the other hand, applicants that have paid all their search/examination fees should surely have some reasonable expectation that they will receive the Examiner’s work product without being held to paying off a renewal fee beforehand.

Has anyone else experienced this issue?


5 Comments

  1. Marc says:

    The information is correct, this new policy is part of the so-called Early Certainty from Search (which is actually deferred examination under another name…), which was published in the OJ a while ago. Files in the grace period are given a “suspended” status and fall to the bottom of the examiner’s docket. To be precise, the examiner could have opened the file, but wouldn’t have been able to do anything with it. Given how obsessed is the EPO management in enforcing this new policy, I can see why the examiner didn’t want to go out of his way to help the applicant…

  2. Old sad man says:

    Is this at all legal. I would think that an application is dead when the time limit for paying the fee with surcharge has lapsed and that the corresponding information is published in the bulletin.
    What about filing a divisional in this time.

  3. Anonymous says:

    After careful thinking, it is not legal! If the applicant wants a communication, it has to be send out, even if the application is virtually dead, it remains alive up to the end of the 6 months period!

    • pierre says:

      You’re right that the application remains alive. However, there is no legal obligation on the EPO to issue a communication within a particular time frame. So it seems difficult to argue that this is actually illegal. (I’d say it IS illegal as a general practice, but that illegality does not come through so forcefully in individual cases…)

      Filing of divisionals during those 6 months should definitely not be a problem.

      I wonder what happens with oral proceedings if the applicant does not pay the renewal fee say one month before the scheduled date. Cancelling those because of non-payment of the renewal fee would seem to very problematic and perhaps illegal.

      Another thing is that written decisions still MUST be issued after an oral refusal in oral proceedings. It is without a doubt illegal to skip that. (Strictly speaking renewal fees are not due anymore after an oral refusal, but whether the computer systems know about that as long as the written decision has not issued is an interesting question.)

      There may be further issues.

  4. Stuart says:

    Re. Oral Proceedings – I’ve just experienced that if you are in the renewal fee grace period OP will still go ahead. You can also discuss your written submissions with an examiner and they may issue a communication in response to your written submissions (for example, if they are tending to agree with one of your suggested amendments, but have a few issues to iron out).

    However, they cannot issue a 71(3) if you do sort things out (either at OP or before). They also cannot tell you why they are unable to do this.

    In my case, the examiner did, though, take the time to phone us and tell us that he is prepared to issue the 71(3) but is unable to and he “can’t tell us why”. We both knew why, but he could only confirm it was due to a formalities problem.

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