 |
 |
| Home | People | Portfolio | Articles | Links | Contact us |
|
||||||||
|
||||||||
|
||||||||
|
||||||||
|
|
EPO Rule Changes April 2010
A number of rule changes affecting patent practice before the European Patent Office (EPO) are due to come into force on 1 April 2010. Some of these changes represent a significant change to current practice as will become clear from the following discussion. New deadlines for filing divisional applicationsPerhaps the most significant of these changes concerns the rules for filing divisional applications. This change will take effect on 1 April 2010 but, under the transitional provisions, the deadline for filing a divisional application based on a European patent application that is pending on 1 April 2010 will under no circumstances expire before 1 October 2010. Amended Rule 36(1) of the European Patent Convention (EPC) sets out alternative circumstances under which a divisional application may be filed, namely: (a) the divisional application is filed before the expiry of twenty-four months from the Examining Division’s first communication in respect of the earliest application for which a communication has been issued, or (b) the divisional application is filed before the expiry of twenty-four months from any communication in which the Examining Division has objected that the earlier application does not meet the requirements of Article 82 (i.e. an objection of lack of unity of invention), provided it was raising that specific objection for the first time. Neither of the specified twenty-four month periods can be extended and further processing is not available in the event that the deadline is missed. We believe that, in most cases, the circumstances of sub-paragraph (a) will apply. That is, a non-extendible period of two years will be triggered by the issue of the first substantive communication from the Examining Division on the earliest European patent application in the family. As well as bringing forward the divisional filing deadline, this provision will severely limit the opportunity to file second or subsequent divisional applications - especially as we expect that the circumstances of sub-paragraph (b) will arise very rarely in view of the EPO’s amended search practice (see below). Thus, it may be appropriate to file several parallel divisional applications before the end of the two-year period if the original application includes claims deemed to relate to multiple inventions. Note that the deadline of sub-paragraph (a) will not be triggered by any events in the International phase of a Patent Cooperation Treaty (PCT) application that enters the European phase (Euro-PCT application), e.g. issue of the International Search Report, Written Opinion of the International Searching Authority or International Preliminary Report on Patentability, or by issue of a European Search Report or Search Opinion. Sub-paragraph (b) provides a further, later, opportunity to file a divisional application in the event that a lack of unity objection is raised on the immediate parent of a proposed divisional application by the Examining Division, provided that the lack of unity objection has not previously been raised on the parent application or its earlier ancestors. It is not at this stage clear how the EPO will determine whether a specific lack of unity objection is raised "for the first time". However, the amended rules on searching suggest that a new lack of unity objection need only be raised by the Examining Division in rare circumstances. In most cases, limitation of the scope of the European Search Report will allow the Examining Division to require the removal of unsearched subject matter from an application without raising a formal lack of unity objection and without triggering the later deadline of sub-paragraph (b). There is no change to the requirement that the immediate parent application must be pending at the time the divisional application is filed. We are reviewing all our clients’ pending European patent applications to confirm the deadline on each. We recommend that our clients determine whether one or more divisional filings are desired in good time before the initial 1 October 2010 deadline, as we anticipate a high demand for divisional filings at that time. We also suggest that our clients may wish to consider accelerating prosecution of currently pending applications in order to permit a more informed decision on the need for divisional filings to be reached prior to the relevant deadline. Limitation of scope of searches carried out by the EPONew Rule 62a and amended Rule 63 EPC will result in significant limitation of the scope of the search carried out by the EPO where there are multiple independent claims in the same category or where the search Examiner determines that issues of support, clarity or conciseness limit the opportunity to carry out a meaningful search. In both instances, the applicant has an opportunity to direct the focus of a narrowed search by responding within a two-month period. However, any unsearched subject matter will need to be deleted during substantive examination. In the case of Rule 62a, the applicant will be invited to select one independent claim in each category (e.g. product, method, etc) identified by the search Examiner. The selected independent claims will then form the basis of the search or, if no response is filed, the search will be based on the first independent claim in each category. Under amended Rule 63, the applicant will be invited to file a statement indicating the subject matter to be searched if the search Examiner finds that a meaningful search is not initially possible. In the absence of a response, the EPO will either issue a reasoned declaration explaining why a meaningful search cannot be carried out or will, as far as is practicable, draw up a partial search report. It will remain possible under amended Rule 64 EPC to pay for supplementary searches in the event that the Search Division raises a lack of unity objection. The response period will be extended to two months. However, even if multiple inventions are searched on a divisional application, this is unlikely to lead to a new lack of unity objection during substantive examination if the relevant subject matter was claimed in the parent application as filed. Hence the extended divisional filing deadline of Rule 36(1)(b) EPC is unlikely to be triggered. Requirement to respond to search opinions produced by the EPOUnder amended Rules 70(a) and 161 EPC, it will be necessary to file a response to a Search Opinion issued by the EPO if any negative conclusions are reached. No response is required if the Search Opinion is wholly positive but if no response is filed, the opportunity to file voluntary amendments as of right will almost invariably be lost. For direct European patent applications and Euro-PCT applications for which the EPO was not the International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA), a six-month term will be set for responding to the extended European Search Report. For Euro-PCT applications for which the EPO was the ISA or IPEA, a one-month term for responding to the Written Opinion of the International Searching Authority or the International Preliminary Report on Patentability (IPRP) will be triggered by issue of the Communication under Rule 161 EPC. Thus, we recommend that our clients consider how any objections raised by the EPO during the International phase might be addressed at the same time as preparing instructions for European regional phase entry. Reduced opportunity to file voluntary amendmentsUnder amended Rule 137 EPC, the opportunity to file voluntary amendments as of right will be significantly reduced. For Euro-PCT applications where the EPO was the ISA or IPEA voluntary amendments must be filed with the compulsory response to the Written Opinion of the International Searching Authority or the International Preliminary Report on Patentability. For Euro-PCT applications where the EPO was not the ISA, voluntary amendments may be filed in response to the invitation under Rule 161(2) EPC or in response to the European Search Opinion. In the case of direct European applications, the only opportunity for voluntary amendment will be in response to the extended European Search Report. It will no longer be possible to file voluntary amendments in response to the first substantive communication from the Examining Division - the Examiner’s discretion will apply. These restrictions on voluntary amendment apply even if the Written Opinion, IPRP or Search Opinion is wholly positive. Please note also, that voluntary claim amendments cannot include unsearched subject matter. Thus, voluntary amendments cannot be used to provoke a lack of unity objection to trigger the later deadline for filing divisional applications under Rule 36(1)(b). Finally, we would be happy to provide more specific advice relating to any aspect of the forthcoming EPO rule changes, on request.
CorrespondenceAndrew R N Clements
|