OJ EPO 2018, A25 - Notice from the EPO dated 18 January 2018 concerning the safeguards available under the EPC and the PCT in case of unavailability of means of electronic communication

1. Over the last decade, the EPO has continuously expanded and enhanced the means of electronic communication it provides to applicants, to meet their growing interest in using them. The means of electronic communication currently provided or authorised by the EPO under Rule 2(1) EPC and Rule 89bis PCT are web-form filing, online filing, CMS, ePCT and PCT-SAFE.[ 1 ]

To improve online services and offer the best possible IT environment to users, regular maintenance of EPO electronic systems is necessary. In some exceptional situations this may affect users' ability to use them in full.

For reasons of legal certainty, the present notice clarifies the safeguards in place if, exceptionally, a means of electronic communication is unavailable for reasons attributable to the EPO.

2. Maintenance is normally scheduled for weekends to avoid any inconvenience for those using means of electronic communication. As a rule, the EPO publishes advance notice, on a dedicated page of its website, several days before any periods of unavailability due to such work.[ 2 ] It recommends that parties check the website regularly to avoid being taken by surprise by downtimes due to maintenance announced in advance.

Euro-direct procedure and European phase

3. In the Euro-direct procedure and the European phase, Rule 134(1) EPC protects users in the event of unavailability of one of the electronic means of communication on the last day of a period for performing procedural acts. It does so by extending that period to the first working day on which all means of electronic communication are available. Such extensions are conditional on the unavailability being attributable to the EPO.

The above derives from Rule 134(1), second sentence, EPC which lays down that the first sentence of the paragraph applies mutatis mutandis if a period expires on a working day on which one of the means of electronic communication permitted by the President of the EPO under Rule 2(1) EPC is unavailable for receiving documents.[ 3 ]

The extension of periods under Rule 134(1) EPC applies to all types of means of electronic communication (installed software or web-based applications) provided by the EPO under Rule 2(1) EPC, and to all documents which can be filed electronically, regardless of any restrictions applicable to the means of electronic communication in question.[ 4 ] More specific provisions governing the extension of periods may apply to other electronic services such as the "Mailbox" pilot project.[ 5 ]

Example 1: Web-form filing is unavailable on a Monday (working day) for exceptional maintenance works, as previously announced on the EPO website. All other means of electronic communication (e.g. online filing and CMS) are available. The nine-month period for filing the notice of opposition under Article 99(1) EPC expires on the Monday. On Tuesday (working day), all means of electronic communication, including web-form filing, are available. Under Rule 134(1), second sentence, EPC, any period expiring on the Monday is extended to the Tuesday. Hence, notice of opposition filed on the Tuesday is deemed to have been received in due time.

4. If a means of electronic communication is unavailable for four hours or more and the EPO has published an advance notice about this, Rule 134(1), second sentence, EPC applies in order to strike the necessary balance between the interests of the public and of the parties (especially of those operating in time zones other than CET (Central European Time)).

Example 2: As announced on the EPO website, the EPO's online filing client is unavailable on a Monday (working day) from 18.00 to 22.00 hrs CET. All other means of electronic communication are working all day. On Tuesday (working day), all means of electronic communication are available throughout the day. Rule 134(1), second sentence, EPC extends any period expiring on the Monday to the Tuesday.

5. Parties who file a document on a day to which a period was extended under Rule 134(1), second sentence, EPC are advised to cite the relevant notice on the EPO website when invoking that provision.

International phase

6. In the international phase, the extension of periods under Rule 134(1), second sentence, EPC applies mutatis mutandis by virtue of Article 150(2) EPC to documents filed with the EPO in its capacity as receiving Office, International Searching Authority, Authority specified for supplementary international search or International Preliminary Examining Authority. Such extensions are conditional on a means of electronic communication provided or authorised by the EPO under Rule 89bis PCT, i.e. web-form filing, online filing, CMS, ePCT or PCT-SAFE (cf. point 1, first paragraph), being temporarily unavailable for a reason attributable to the EPO. Point 4 applies mutatis mutandis.

Unavailability for reasons other than maintenance

7. A means of electronic communication may exceptionally be unavailable for reasons other than those indicated above (e.g. a malfunction). Although the burden of proving receipt lies with the party alleging submission in time, the EPO will look into any alleged unavailability of a means of electronic communication. A user in doubt as to whether a document was properly transmitted is recommended to contact EPO Customer Services. The user will suffer no adverse consequences if it is confirmed that the unavailability was attributable to the EPO. However, to be sure of avoiding any adverse consequences, it is also advisable, as a precautionary measure, to request the legal remedy available.

 

 

[ 1 ] See the decisions of the President of the EPO dated 10 November 2015 concerning the electronic filing of documents (OJ EPO 2015, A91); dated 11 March 2015 concerning the filing of documents using the EPO case management system (OJ EPO 2015, A27); dated 10 September 2014 concerning the filing of documents using the EPO web-form filing service (OJ EPO 2014, A98); and dated 24 October 2014 concerning the filing of international applications with the EPO acting as receiving Office using ePCT-Filing (OJ EPO 2014, A107). See also the notice from the European Patent Office dated 23 September 2016 concerning the online filing of subsequently filed documents under the PCT, including the demand under PCT Chapter II (OJ EPO 2016, A78).

[ 2 ] www.epo.org/applying/online-services/online-filing-outages.html

[ 3 ] Rule 134(1), first sentence, EPC governs the situation where a period expires on a day on which one of the EPO filing offices (Berlin, Munich or The Hague) is not open for receipt of documents or mail is not delivered. This period is extended to the first working day thereafter on which all filing offices are open for receipt of documents and on which mail is delivered. By definition, this includes weekends and the public holidays observed by the EPO. A list of days on which EPO filing offices and national patent authorities of the EPC contracting states are closed is published in each January issue of the Official Journal.

[ 4 ] See Article 2 of the decision of the President of the EPO dated 10 September 2014 concerning the filing of documents using the EPO web-form filing service (OJ EPO 2014, A98); Article 3 of the decision of the President of the EPO dated 10 November 2015 concerning the electronic filing of documents (OJ EPO 2015, A91); Article 2 of the decision of the President of the EPO dated 11 March 2015 concerning the filing of documents using the EPO case management system (OJ EPO 2015, A27).

[ 5 ] See e.g. the decision of the President of the EPO dated 11 March 2015 concerning the pilot project to introduce new means of electronic communication in EPO proceedings (OJ EPO 2015, A28).

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