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The European Patent Office ("EPO") has recently announced a series
of rule changes that are due to come into effect on 1 April 2010.
However, many of the changes will affect existing European and PCT
applications, and those that are filed in the next year.
The main
effect of these changes is to limit the period for filing divisional
applications, and to require applicants to respond to objections at an
earlier stage during the prosecution of applications.
This note
provides a summary of the rule changes and preliminary considerations
to be taken into account. More detailed advice on specific cases will
follow as required.
Divisional applications
It
is currently possible to file a divisional application at any time
whilst the parent application on which it is based is pending (i.e.
before the parent application is granted or refused).
Under the
new rules (amended Rule 36), after 1 April 2010 it will only be
possible to file a divisional application until the later of two years
from issuance of the first office action issued in respect of the
earliest European application in the family for which an official
action has issued, or from the initial specific lack of unity objection
on any European application in the family. It will still only be
possible to file a divisional application if the application from which
it is divided is still pending.
The new rules will apply to all
cases, including pending applications on which official actions have
already issued. However, there will be a grace period until 1 October
2010 within which to file a divisional application.
Search Procedure
Some
years ago, a rule was introduced that precluded the inclusion of
multiple independent claims of the same claim category (for example
multiple independent apparatus claims) except where these covered
interrelated products, different uses of a product or apparatus or
alternative solutions to a particular problem that could not be covered
by a single claim. This rule was applied during substantive examination
of applications.
Under the new rules (new Rule 62a), objection to
the inclusion of multiple independent claims can be raised by the
search examiner. Where such an objection is raised, the applicant will
be required to elect which of the claims are to be used for the search.
During substantive examination, unless it is shown that the search
examiner was wrong in raising the objection, it will only be possible
to maintain claims that have been searched. Applicants will therefore
be forced to elect only one independent claim of each claim category,
other than where the exceptions apply, early in the search procedure.
It
is sometimes the case that the European search examiner considers that
it is not appropriate to carry out a search, for example where the
claimed invention is considered to relate to subject matter excluded from
patentability. At present, the EPO will issue a communication stating
that no search has been carried out. If the objections are addressed
during substantive examination, the EPO will carry out a search at that
time.
Under the new rules (Rule 63), the search examiner should
set a two-month term for the applicant to file a statement as to what
should be searched, and this may allow at least a partial search to be
carried out.
Responses to Written Opinions
When
the EPO carries out a search, either for a normal (non-PCT) application
or for a PCT application where a supplementary search is required (a
PCT application not searched by the EPO in the International Phase), an
extended search report is issued including a written opinion. At
present, there is no requirement to respond to the written opinion
until the substantive examination has commenced. If no response to the
written opinion has been filed, the EPO will issue a communication
setting a four-month term for responding to any objections raised
previously. This means that applicants currently have at least 6
months, and normally at least 1 year, from issuance of the search
report before they need to respond to any objections raised.
Under
the new rules (Rule 70a), it will be necessary for the applicant to
respond to the written opinion, otherwise the application will be
deemed withdrawn. For normal (non-PCT) applications, the term for
response will be six months following the publication of the European
search report. For ex-PCT applications where the EPO issue a
supplementary search report, the term for response will be a term set
by the EPO. This term is likely to be the same term as that set for
confirming that the application should proceed to examination, which is
currently only two months!
This requirement will apply in respect of any application for which the search report is issued after 1 April 2010.
For
Euro-PCT applications where the EPO has acted as the International
Searching Authority (or International Preliminary Examination
Authority), it will be necessary to file a response to any objection
raised in the written opinion (or International Preliminary Examination
Report) soon after entering the Regional Phase. The EPO will set a term
for filing the response, which will correspond to the current one-month
term set by the EPO inviting the applicant to make amendments to the
claims and to pay any excess claims fees. This requirement will apply
to any case where the current invitation to amend the claims and pay
excess claim fees has not issued before 1 April 2010.
Opportunity to Amend
Applicants
currently have the right to amend an application once after issuance of
the search report and prior to substantive examination, and again
during substantive examination. Any further amendments require consent
of the Examining Division.
Under the new rules (Rule 137),
applicants will only have the right to make amendments when responding
to the written opinion as noted above. Any further amendments, for
example any amendments during substantive examination, can only be made
with the consent of the Examining Division.
Considerations
For
any currently pending European applications where an official action
has been issued, and for any existing divisional applications which are
based on an earlier application for which an official action has
issued, it will be important to consider whether any further divisional
application may be required. Any further divisional application will
need to be filed before 1 October 2010, or two years from issuance of
the first office action on the earliest case if later.
If it is
considered that divisional applications may be required for any
currently pending European patent applications, it may be advisable to
file these new divisional applications as soon as possible so that at
least any additional searches can be carried out before any final
decision needs to be made regarding the filing of any further
divisional applications in the family.
The EPO regularly do not
issue a further official action within 2 years of issuing a first
official action. Therefore, it is important to consider the need of
divisional applications when responding to a first official action, and
not to wait until receiving the response from the EPO to your
submissions.
For any European patent applications for which no
search has been received prior to 1 April 2010, especially cases where
a supplementary search report is awaited, applicants must be prepared
to respond quickly to any objections raised in the written opinion.
Potentially, applicants may have as little as two months to respond in
some cases. It may therefore be advisable to consider requesting
acceleration of the search for these cases in the hope of receiving the
search report and written opinion before 1 April 2010. This would give
a longer period to consider any objections raised in the written
opinion and respond to these, since the existing rules allowing at
least 6 months to respond would apply.
For any PCT applications
being filed now and any filed in the last 6 to 9 months where the EPO
act as the International Searching Authority, it is likely to be
necessary to respond to any objections raised in the International
Preliminary Report on the Patentability shortly after entry into the
European Regional Phase. Accordingly, consideration should be given to
carefully reviewing the written opinion prior to entry into the
European Regional Phase. To assist with this, we strongly recommend
that you instruct us as early as possible regarding entry into the
European Regional Phase, and that you provide us with a copy of any
International Preliminary Report on Patentability issued with your
instructions.
If you have any queries regarding these rule
changes or require any other information about us please contact your
usual Reddie & Grose Partner or Briget Harrison, Marketing Manager:
Email:
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