Approved text under Rule 71(3): last-minute corrections and a third-party attack
European patent application EP 2 187 654.3 (applicant: Kabushiki Kaisha Tokai Denki, Tokyo) is in examination before the examining division. On 12 March 2024 the division despatched a communication under Rule 71(3) EPC approving a text with claims 1-12, description pages 1-9 and figures 1-3, and inviting payment of the grant and printing fees and filing of any translations. The communication was notified to your firm's MyEPO Mailbox on the same day; no paper copy was sent. The client's instruction of 8 July 2024 raises three points. First, approved claim 1 no longer contains the feature 'the second electrode is annular', although that feature was in claim 1 as originally filed, and the description at page 4, lines 12-18 still describes the annular embodiment. Second, page 7, line 3 refers to 'Fig. 4', which was deleted during examination. Third, on 1 July 2024 a competitor filed third-party observations under Article 115 EPC citing a new document D9. The client also wants a new dependent claim directed to the 'porous separator' embodiment described on page 6.
1. Calculate the last day of the Rule 71(3) period on these facts and state whether it can be extended. What must you file by that date if the text is to be changed, and what happens if nothing at all is filed?
Read the worked answer
Calculation. The four-month period under Rule 71(3) EPC runs from notification of the communication, computed under Rule 131 EPC. Since 1 November 2023 the EPO no longer adds the ten-day fiction formerly contained in Rule 126(2) EPC to documents notified through the electronic mailbox: a document is deemed notified on the date it bears. The period therefore starts on 13 March 2024 and expires on Friday 12 July 2024. That is a normal working day, so Rule 134(1) EPC does not push the date back. If the ten-day rule were (wrongly) applied, one would arrive at 22 July 2024 - a classic trap.
No extension. The period in Rule 71(3) is expressly non-extendable. The only way to gain time is to request amendments, which leads the division to issue a fresh communication if it accepts them.
What to file. By 12 July file a written request to amend the text approved under Rule 71(3), with clean and marked-up claims, replacement description pages, and reasons. Crucially, do not pay the grant and printing fees and do not file translations: paying the fees and filing the translations is what constitutes approval of the text. Paying first and amending afterwards is not possible in this procedure.
If nothing is filed, the text is not approved; the application is deemed withdrawn under Rule 71(5) and you would receive a notification under Rule 112(1) EPC. The client would then have to fight about loss of rights instead of about claims.
2. Assess each of the three changes to the text - re-inserting the annular feature, correcting the 'Fig. 4' reference and adding the dependent claim to the porous separator - and say which you would actually pursue.
Read the worked answer
Re-inserting the annular feature - pursue it. The feature has a literal basis in claim 1 as filed, so re-inserting it does not add subject-matter under Article 123(2) EPC; it merely restricts the claim. The real hurdle is procedural: amendments requested after Rule 71(3) lie within the examining division's discretion and the division applies a restrictive test - the amendment must be clearly allowable and must not necessitate a fresh search or a substantial re-examination. A feature present in the application as filed and still described on page 4 is the strongest possible case. Remember to adapt the description and the dependent claims so that the text is internally consistent; an unamended description referring to a now-claimed embodiment is a standard reason for a further round.
'Fig. 4' - pursue it, but frame it correctly. This is not a discretionary amendment in substance but the removal of an inconsistency created by the earlier deletion of the figure. Either present it as a consequential adaptation of the description or, as a fallback, as the correction of an obvious error under Rule 139 EPC, since the skilled reader would immediately see that no Fig. 4 exists.
New dependent claim to the porous separator - do not pursue it now. It is not occasioned by any objection and is a genuine expansion of the claim set at the very last stage. The division will almost certainly refuse it. If the subject-matter matters commercially, file a divisional application while the parent is still pending, rather than jeopardise the grant.
3. How do you deal with the Article 115 observations filed on 1 July 2024, given that they arrived after the Rule 71(3) communication?
Read the worked answer
Status of the observations. Third-party observations under Article 115 EPC do not make the third party a party to the proceedings and impose no obligation on the EPO to reply to that person, but the examining division must consider them. They may be filed at any time before grant; the fact that Rule 71(3) has already issued does not make them inadmissible, and if the division considers D9 relevant it may re-open examination or decline to approve the text.
Practical consequence. Do not treat the observations as background noise and simply pay the fees. Because you are already asking the division to re-open the text to reinstate the annular feature, you have a natural vehicle: address D9 in the same letter, within the four-month period, explaining why it is not novelty-destroying and why the amended claim 1 is inventive over it (and over the combination the division has already accepted). Keep the argument on the amended claim, not on the old one, so that the division is not invited to examine two claim sets.
Procedural safeguards. Ask the division to confirm in writing how it intends to proceed. If it accepts the amendments it will issue a new Rule 71(3) communication with a fresh four-month period; if it takes the view that the original communication remains valid, you must know that before 12 July. Also flag that, if the division intends to rely on D9 against you, you expect an opportunity to comment (Article 113(1) EPC) before any decision. Finally, note that a patent granted in disregard of relevant Article 115 material remains exposed in opposition.