The European Patent Office (“EPO”) has recently announced a series of rule changes that are due to come into effect on 1st 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.
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 1st 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.
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 1st 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 1st 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.
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 1st 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 1st 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.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.