Significant European Patent Office Procedural Changes Coming 2010

New two year time limit for filing European divisionals

EPO change of rules regarding divisional applications 

The European Patent Office Administrative Council has agreed substantive changes to the time limits for filing divisional applications as set out below.   

Time limits for filing divisional applications 

From 1 April 2010, divisionals must be filed within 24 months of either: 

• the issuance of the first communication from the Examining Division; or
• the issuance of a lack of unity objection. 

There will be a six-month grace period up to the end of September 2010 for filing divisional applications where the 24 month period has already expired or will expire before the end of September 2010. 

Further Processing will NOT be available to extend these time limits.

Language for filing divisional applications

Under the new rules, where a parent application was originally filed in a language other than English, French or German, any new divisional applications may be filed in the language of filing of the parent application.

Multiple claims in one category, effect on Search (New Rule 62a EPC) – Two-month period to select one claim in each category 

Where an application has more than one independent claim in each category (method, apparatus, product) and the EPO considers that the subject-matter defined in those claims does NOT involve:

(a)   a plurality of inter-related products;

(b)   different uses of a product or apparatus;  or

(c)   alternative solutions to a particular problem (where it is inappropriate to cover these alternatives by a single claim)

new Rule 62a EPC will require the applicant, within a period of two months of notification, to identify one independent claim from each category to be searched.  Further processing will NOT be available (amended Rule 135(2) EPC).  If the applicant fails to respond within the time period, the search will be carried out on the basis of the first claim in each category.

The Examining Division will require restriction to the subject-matter searched, unless the objection is unjustified.

Incomplete search (Rule 63 EPC) – Two-month period to clarify matter to be searched

In order to reduce the number of incomplete Search Reports and declarations of no search, the EPO will allow Examiners to contact applicants during the search phase in order to seek clarification of what must be searched.

Accordingly, Rule 63 EPC is being amended to give the applicant a period of two months to provide clarification of the subject-matter to be searched where the EPO considers that it is impossible to carry out a meaningful search. If a statement indicating the subject-matter to be searched is not filed in due time, or if it is not sufficient to overcome the deficiency noted under paragraph 1, the EPO will, as before, either issue a declaration of no search or, as far as is practicable, draw up a partial Search Report. Further processing will NOT be available (amended Rule 135(2) EPC).

When a partial Search Report has been drawn up, unsearched subject-matter will need to be excised from the application and cannot be used as basis for amendments, as in the case of non‑unity.

Lack of Unity at Search Stage (Rule 64, paragraph 1 EPC) – Fixed two-month period for paying further search fees

If the Search Division considers that an application does not comply with the unity requirements of Article 82 EPC, it will draw up a partial Search Report for the invention first mentioned in the claims. 

At present, the EPO invites the applicant to pay an additional search fee for each further invention to be searched within a period of two to six weeks. However, under new Rule 64(1) EPC, the period for paying the additional search fess will be fixed at two-months. As before, further processing will NOT be available (Rule 135(2) EPC).

Compulsory response to the extended European Search Report (Rule 70a EPC)

Currently, the EPO drafts an opinion on patentability to accompany the Search Report for: (i) European applications; and (ii) international applications that enter the European regional phase and for which a supplementary Search Report must be drawn up (i.e. where the EPO was not the International Searching Authority (ISA)).

An applicant is however not obliged to reply to this “search opinion”.  Instead, the applicant can defer making any necessary amendments and/or arguments until after receipt of that first Office Action

New Rule 70a EPC will require the applicant to substantively respond to this search opinion within the period for paying the examination fee (i.e. within six-months of publication of the Search Report).  Alternatively, if the examination fee has already been paid prior to the search being carried out, or a supplementary European Search Report has been drawn up on a Euro-PCT-application, Rule 70a EPC will require the applicant to substantively respond to the opinion within a period specified by the EPO.

If no response is filed within the required time period, the application shall be deemed to be withdrawn. However, Further Processing may be used to revive the application.

Compulsory Response to IPRP or IPER required shortly after regional phase entry at the EPO  (Rule 161 EPC) 

At present, shortly after European phase entry, the EPO invites an applicant to amend the application under Rule 161 EPC within a time limit of one month.

However, from 1 April 2010, where the EPO was the International Searching Authority (ISA) and so issued the IPRP or acted as the International Preliminary Examining Authority (IPEA) and so issued the IPER, the Rule 161 communication will require the applicant to:

• comment on and/or correct any deficiencies noted in the IPRP or in the IPER; and
• amend the description, claims and drawings, where appropriate.   

In the event that the applicant does not file a substantive response within the required time period of 1 month from notification, the application will be deemed to be withdrawn.  The Further Processing provisions may be used to revive the application. 

These changes will take effect from 1 April 2010.  Accordingly, amended Rule 161 will be relevant for PCT applications that are currently in the International Phase, that is PCT applications that are due to enter the European regional phase around 1 April 2010. 

For ex-PCT applications where the ISA is other than the EPO, the situation remains unchanged, i.e. the applicant will receive a communication from the EPO after European phase entry, providing an opportunity to file amendments to the application within a time limit of one month.  The Supplementary Search will be carried out on the basis of the application as so amended.

Changes to Amendment procedure (Rule 137 EPC) – Greatly limited!

A number of changes will be made to the amendment provisions under Rule 137 EPC:

•  At the moment, the applicant may amend the application of his own volition after receipt of the Search Report and in response to the first Office Action from the EPO. However, the ability to file voluntary amendments (i.e. not at the Examiner’s discretion) is being limited. Under new Rule 137 EPC, an applicant may only amend the description, claims and drawing of his own volition when responding to (a) the search opinion under Rule 70a EPC (see above); or (b) the new Rule 161 EPC communication.
•  The EPO is amending Rule 137 EPC to force an applicant to indicate the basis for amendments in the application as filed.  If the applicant does not comply, the Examining Division may request the applicant to indicate such basis within a time limit of one month.  If the applicant does not respond, the application will be deemed to be withdrawn (Further Processing may be used to revive the application).
• The EPO is also changing Rule 137 EPC to clarify that applicants cannot introduce claims which have not been searched under new Rule 62a EPC (i.e. multiple claims in one category) or 63 EPC (i.e. subject-matter that does not comply with the requirements of EPC such that no meaningful search can be made).

Information about publication (Rule 69 EPC)

The EPO issues a Communication under Rule 69 EPC which informs an applicant about the date of publication of the search report and also draws attention to the date for filing the request for examination (six months from publication of the Search Report). 

This Rule is being amended to ensure that the Communication also draws attention to the date for responding to the search opinion (i.e. new Rule 70a, paragraph 1 EPC (see above)).

Entry Into Force

The above changes will enter into force on 1 April 2010.  New Rules 62a, 63, 70a and 137 will apply to European patent applications for which the European Search Report or the supplementary European Search Report is drawn up on or after 1 April 2010, whilst new Rule 161 will apply to European patent applications where a communication under current Rule 161 has not been issued before 1 April 2010.

In view of the short time period set by the Rule 161 communication, the objections raised in the IPRP or IPER should at least be considered when entering the regional phase before the EPO. Your usual Mathys & Squire contact will be happy to discuss how best to address the new procedure, and how to respond to those objections which relate specifically to European practice.

For further information please click on the links to see the official EPO notices below.

• Decision of the Administrative Council of 25 March 2009 amending the Implementing Regulations to the European Patent Convention (CA/D 2/09) 
• Decision of the Administrative Council of 25 March 2009 amending the Implementing Regulations to the European Patent Convention (CA/D 3/09)