Having regard to Articles 10(2)(i) and 119 and Rules 2, 67(1), 68(2), 73(2), 87, 127, 147(2), 150(2) and 152 EPC, Articles 5, 6, 7 Rules relating to Fees and to Articles 17(2) and 18(2) and Rules 44, 80.6, 89bis.1 and 2 PCT,

Has decided as follows:

General provisions

Article 1 Scope of application

(1) The European Patent Office (EPO) is continuing to develop its IT systems, the aim being to automate procedures, make the filing of documents and communication with users more effective and secure, and facilitate co-operation between the EPO and users. To that end, it is conducting a pilot project in which it will progressively make available new technical means for the electronic communication of patent applications, other documents, notifications and further information.

(2) Within the framework of the pilot project, the EPO reserves the right to change, in whole or in part, limit or discontinue the technical means of communication made available on the basis of the present decision.

(3) In accordance with the present decision, the pilot project will cover in particular the following areas:

(a) how documents are filed in proceed- ings under the EPC, and the filing of international patent applications and other documents in proceedings under the Patent Cooperation Treaty (PCT);

(b) the data formats and aids available for filing;

(c) notification of communications to the parties to proceedings;

(d) co-operation with such parties and other users of the technical means made available by the EPO;

(e) the publication of European patent applications and European patents;

(f) file inspection;

(g) payment of fees.

Article 2 Participation in the pilot project

(1) The pilot project is open to all parties to proceedings and users who fulfil the specific conditions for taking part and have informed the EPO that they are willing to do so in respect of one or more of the technical means of communication made available on the basis of the present decision.

(2) In the event of suspected abuse or unauthorised use, the EPO reserves the right to refuse access, in individual cases, to the technical means of commu- nication made available on the basis of the present decision.

Article 3 Formal provisions

The formal provisions to be complied with result from the technical means of communication made available and their accompanying documentation.

Article 4 Logs

Procedurally relevant communication will be logged. The logs may be drawn upon where relevant; they will then go into the public part of the file.

Article 5 Technical faults

(1) If faults in the technical means of communication give rise to adverse legal consequences in proceedings, the EPO will put the parties concerned in the position, within the framework of the legal provisions in force, in which they would have been if the said consequences had not arisen.

(2) The EPO may invite parties to proceedings to repeat procedural acts within a time limit set by the EPO; the possibility of performing procedural acts otherwise than by using technical means of communication on the basis of the present decision remains unaffected.

(3) A party to proceedings cannot invoke paragraph 1 if

(a) the technical fault concerned the filing of a patent application, he could have realised that the fault had occurred, and he did not file the application in another form without delay;

(b) he became aware of the faults which caused the adverse legal consequences, and did not inform the EPO about them without delay; or

(c) he did not repeat the procedural act despite an invitation under paragraph 2.

Individual procedural acts

Article 6 Filing of documents in proceedings under the EPC

In so far as the EPO provides the relevant technical means of communica- tion, they may be used in proceedings under the EPC to file documents in the form of structured data or in another form.

Article 7 Filing of international patent applications and other documents

In so far as the EPO provides the relevant technical means of communica- tion, they may be used to file interna- tional applications and other documents within the meaning of Rule 89bis.1 and 2 PCT in the form of structured data or in another form.

Article 8 Conversion of documents

Documents not filed in electronic form may be converted by the EPO and added in electronic form to the electronic file.

Article 9 Electronic notification

(1) In so far as the EPO provides the relevant technical means of communica- tion, notification may occur in electronic form to an activated Mailbox (electronic notification).

(2) Electronic notification comprises the communications contained in a list published in accordance with Article 13.

(3) Electronic notification is effected by electronic communication to the Mailbox.

(4) In proceedings under the EPC, electronic notification is deemed to have been effected at the latest on the tenth day after transmission of the electronic communication to the Mailbox, unless the communication arrives later or not all.

(5) Electronic notification of communica- tions in proceedings under the PCT is governed by the provisions of the PCT.

(6) In case of electronic notification, no paper copies will be notified in parallel.

(7) In so far as notification is effected in the form of structured data, the Office will make technical conversion tools avail- able to the parties to the proceedings.

Article 10 Creation, maintenance and proces- sing of files

Notwithstanding Article 1 of the decision dated 12 July 2007 concerning use of the PHOENIX electronic file system 1, files or parts thereof relating to European patent applications and to international applications for which the EPO is acting under the Patent Cooperation Treaty (PCT) may also be created, maintained and processed in other electronic systems of the EPO.

Article 11 Determining the number of pages in an application

If the documents are transmitted in the form of structured data, the number of pages in a European patent application is determined, in accordance with the formal provisions laid down in the Imple- menting Regulations, using technical means made available by the Office to the parties to the proceedings.

1 Decision of the President of the European Patent Office dated 12 July 2007 concerning use of the PHOENIX electronic file system for the creation, maintenance and preservation of files (Special edition No. 3, OJ EPO 2007, J.1).

Implementation of the decision

Article 12 Authorisation to issue supplementary rules

The Vice-President Directorate-General 5 is authorised to approve the use of new technical means of communication made available on the basis of the present decision and to issue supplementary provisions, including the specific condi- tions for participation (Article 2), and rules which diverge from the present decision in so far as they are required by changes in test operation.

Article 13 Publication

The approval of new technical means of communication made available on the basis of this decision, the issue of supplementary provisions, including documentation concerning the individual technical means of communication and the conditions for taking part in the pilot project, will be made public on the EPO website or in another suitable form.

Final provisions

Article 14 Previous decisions and notices superseded

On the entry into force of the present decision, the decision of the President of the EPO dated 13 December 2011 concerning notification by technical means of communication in selected EPO proceedings (OJ EPO 2012, 10) is set aside.

Article 15 Entry into force

This decision enters into force on 1 September 2012.

Done at Munich, 4 July 2012

Benot BATTISTELLI President

References: ar10; ar119; r2;