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Published byPatrick Dennis Modified over 9 years ago
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Heli Pihlajamaa June 2015Director Patent Law Update on electronic tools of the EPO – notification, filing and fee payment
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European Patent Office PCT-matters in IP5 WG3 Introduction of ‘top-up’ searches in PCT Chapter II Information regarding search strategies Collaborative Search & Examination Incorporation by reference of missing parts or elements Transmittal of earlier search results 2
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European Patent Office Overview Electronic notification −Amendments to Rule 127 EPC −Mailbox service Electronic filing – new filings tools −New Online Filing (CMS) −Web-form Filing Fee payment 3
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European Patent Office Electronic notification new Rule 127 EPC amendment in force since 1 April 2015 signifies equal importance of electronic notification confirms the 10 day rule for electronic notification in the Implementing Regulations: −a communication is deemed to be notified on the 10 th day after transmission −equal treatment with notification on paper (cf. Rule 126(2) EPC) 4 legal safeguards: −express agreement to electronic notification by the addressee required −burden of proof for (timely) electronic notification lies with the EPO see Notice of the EPO dated 30 March 2015 (OJ EPO 2015, A36)
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European Patent Office Electronic notification Mailbox service requires smart card and activation of the mailbox limited in scope (communications up to grant – see list on the EPO website) and participation (professional representatives only) 5
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European Patent Office Electronic filing 2000: Online Filing 6 client software package installed on user’s PC requires a smart card (for wrapping and sending)
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European Patent Office Electronic filing 2014 (1) – New Online Filing (CMS) 7 web-based application: no need for software installation and update requires activated smart card (for log-on) for all types of documents, with the exception of priority documents PDF, XML, and ST25 sequences listings access rights management, multi-user features, portfolio management, templates, address book, fee payment etc.
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European Patent Office Electronic filing 2014 (2) – Web-form filing 8 web-based application for upload of PDF documents quick-and-easy online registration and log-on (e-mail / password) not for documents relating to opposition, limitation, revocation and appeal and for priority documents filing only – no additional features
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European Patent Office Fee payment Online Fee Payment −web-based application −requires smart card and EPO deposit account −monitor account −set up and manage automatic debit orders −since 1.4.2015: automatic debit orders also for PCT fees (RO / ISA / IPEA) Online Filing & New Online Filing (CMS) −allows filing of single payment orders (individual or automatic debit orders including automatic debit orders for PCT fees) 9
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European Patent Office Thank you for your attention! 10
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