New Rule 56a of the Implementing Regulations to the European Patent Convention: the saving rule for the date of filing

Cristina Georgescu
Cristina Georgescu

The Administrative Council of the European Patent Organisation (EPO) has decided on 14 December 2021 to insert, in the Implementing Regulations to the European Patent Convention (EPC), a new Rule 56a about correcting of erroneously documents or erroneously parts of documents on or after the day on which the European patent application is filed.

According to Notice EPO OJ 2022, A71, whether documents were erroneously filed will depend only on the applicant’s statement as to what was intended. No further evidence will be required by the EPO in this regard.

This decision entered into force on 1 November 2022.

Rule 56a EPC as inserted by this decision shall apply to all European patent applications filed on or after this date with the EPO.

Accordance of a date of filing to the European patent application is a complex concept to the EPO. The accordance of a date of filing is crucial in view of all the implications brought by the subsequent search of prior art, by the validity of priority document, by the patentability of the application etc.

According to EPO Decision G3/98, the “day on which an application is filed” is to be distinguished from the “date of filing”.

The date of filing is not necessarily identical with the day on which application documents are filed. The legal implications of the date of filing differ from those of the filing of the European patent application. That precludes treating the two terms as synonymous.

The date of filing is a date accorded to the application following the examination on filing (Art. 80, Art. 90(1), Rule 40 EPC). The date of filing is not necessarily identical with the day on which application documents are filed: for example, it may be re-dated if drawings are filed late.

According to Rule 40(1) EPC, the date of filing of a European patent application shall be the date on which the documents filed by the applicant contain:

(a) an indication that a European patent is sought;

(b) information identifying the applicant or allowing the applicant to be contacted; and

(c) a description or reference to a previously filed application.

According to Art. 90(2) EPC, a date of filing could even not be accorded if the application does not satisfy the requirements for the accordance of a date of filing.

If a date of filing cannot be accorded following the examination on filing, the application shall not be dealt with as a European patent application. However, the deficiencies can be remedied within two months.

In order to overcome the effect of the plurality of possible errors on filing, the EPC provided the new Rule 56a about correcting of erroneously filed documents or erroneously filed parts of documents.

Before 1 November 2022, the EPC allowed only adding of missing parts of the description and/or missing drawings under the old Rule 56 EPC, as distinct from replacing the erroneously filed documents or parts under the new Rule 56a EPC.

According to Notice EPO OJ 2022, A71, the new Rule 56a concerns the following aspects:

New Rule 56a(1) EPC (invitation to file correct documents): If, during examination on filing, the EPO establishes that the description, claims or drawings (or parts of them) appear to have been filed erroneously, it will invite the applicant to file the correct documents. Correct application documents must be filed within two months of that invitation or of an invitation under Rule 56(1) EPC. Even applicants who have not been so invited may file correct application documents under Rule 56a EPC within two months of the filing date.

New Rule 56a(2) EPC (same-day corrections without changing the filing date): This provision formalises the EPO practice where corrections of application documents are received on or before the accorded date of filing. It allows the correction and exchange of application documents on or before the date of filing without changing the filing date. As is the EPO’s current practice, applicants will thus not need to file a second application and pay the corresponding fees if they realise on the date of filing (or earlier if the date of filing cannot yet be accorded) that they erroneously filed incorrect application documents.

New Rule 56a(3) EPC (correction with change of filing date): This provision will allow applicants to correct the description, claims and drawings (or parts of them) after the date of filing if they were erroneously filed, provided the correct documents are filed within two months of the date of filing or of the invitation. The erroneously filed application documents will be deemed not to have been filed and the correct documents will be added. The date of filing will be shifted to the date of receipt of the correct application documents (or parts). A change of the date of filing may result in a loss of the right to priority. The benefit of this procedure is that applicants do not need to file a second application and pay the corresponding fees if they realise that they erroneously filed incorrect application documents.

New Rule 56a(4) EPC (correction without change of filing date): If the correct application documents (or parts) filed within the period under Rule 56a(3) EPC are completely contained in the priority document, this provision will allow applicants to maintain the initial date of filing when adding those documents (or parts). For the sake of legal certainty, the priority right must have been claimed on the date of filing. Further formal requirements must be met: where applicable, a copy of the earlier application and, if the earlier application is not in an official EPO language, a translation thereof into one of those languages must be filed in addition to an indication as to where the correct application documents or parts are completely contained in the earlier application and, where applicable, in the translation. If all requirements are fulfilled, the initial date of filing will be maintained, the correct documents will be added to the application as filed and the erroneously filed application documents will remain in the application as filed. The EPO will inform the applicant accordingly. The erroneously filed documents may only be removed by amending the application during the grant proceedings and subject to Article 123(2) EPC.

New Rule 56a(5) and (7) EPC (withdrawal of corrections): In cases where the date of filing has been shifted, the applicant may withdraw the corrections in order to maintain the initial filing date. The redating of the application and any filing of the correct documents or parts will then be deemed not to have been made. The erroneously filed documents or parts will be considered part of the application as filed.

New Rule 56a(8) EPC (further search fee): The EPO invites the applicant to pay a further search fee in cases where it has already begun to draw up the search report before the applicant files correct application documents. In cases where the EPO detects the error during the examination on filing and sends a corresponding invitation to the applicant, the search will not start before the procedure is finalised. For reasons of legal certainty, the moment when the search starts is reflected in the file and, after publication of the application, in the European Patent Register. Before publication, the EPO will provide the applicant with this information upon request. It can also be accessed in the electronic file via the MyFiles service or MyEPO Portfolio. If the time limit for paying the fee is missed, the application will be deemed to be withdrawn and further processing is available as a remedy for missing the time limit.

In alignment with the Patent Cooperation Treaty (PCT) procedure, the provision of Rule 56 EPC on missing parts is also amended with effect from 1 November 2022.

Under amended Rule 56(3) EPC, the relevant priority right must be claimed on the date of filing if it is to serve as a basis for adding missing parts without changing the date of filing. This amendment will thus contribute to legal certainty.

According to the “Notice from the European Patent Office dated 23 June 2022 concerning the correction of erroneous filings in proceedings before the EPO”, following the entry into force of new Rule 56a EPC on 1 November 2022, the incompatibility of Rule 20.5bis PCT with the EPC legal framework ceases.

The EPO has thus notified the International Bureau that the new provision will be fully applicable at the EPO from that date.

The new Rule 56a EPC supplements Rule 56 EPC on missing parts and aligns the EPC with Rule 20.5bis of the PCT.

It will thus offer an equivalent to the PCT procedure, allowing the EPO to fully apply the PCT provision.

Romanian patent attorney Cristina Georgescu

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