Communication under Rule 71(3) EPC

The communication under Rule 71(3) of the Implementing Regulations to the European Patent Convention (EPC) is the act by which the Examining Division informs the applicant of the text in which it intends to grant the patent. In practice it closes substantive examination and opens the final stage of the examination procedure. It gives the applicant four months to approve that text in the manner prescribed by the Implementing Regulations.

Acts required of the applicant

The applicant approves the text by completing, within the time limit, two acts that amount to approval within the meaning of Rule 71(5):

• payment of the fee for grant and publishing, together with any claims fees due for each claim beyond the fifteenth that have not yet been paid,
• filing of a translation of the claims into the two official languages of the EPO other than the language of the proceedings.

The text communicated often contains amendments made by the examiner of the Division’s own motion, flagged in the communication, which must be reread with the utmost care.

Amendments and disagreement

An applicant who does not accept the text, or who wishes to correct it, may request reasoned amendments or corrections within the same period, instead of completing the acts of approval. If the Division allows them, it issues a new communication. Otherwise, it resumes examination. If the applicant does not react within the time limit, the application is deemed withdrawn, although the applicant may still request further processing.

Strategic issues at the final stage

Approval of the text can no longer be called into question once the decision to grant has been taken. The case law of the Boards of Appeal does not allow the text of the granted patent to be rectified by way of correction of errors, so that an error not spotted at this stage can only be remedied through limitation or in opposition proceedings, and not always. The period opened by the communication is also the last useful moment to file a divisional application, possible until the day before publication of the mention of grant, and to prepare the request for unitary effect, to be filed within one month of that publication.

Key points

The Rule 71(3) communication announces grant, but it leaves the applicant four months to check the text, pay the fees and file the translations of the claims. The proposed text must be read line by line, since it contains the examiner’s own amendments and approval fixes the patent. Within the same period, decisions should be taken on any divisional applications, on the choice between unitary effect and national validations, and on the strategy to adopt with regard to the Unified Patent Court (UPC).

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats litigates patent disputes before the Paris Judicial Court, the Paris Court of Appeal and the Unified Patent Court. Where the question arises in a real case, the useful moment is almost always before proceedings are issued.

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