Amended EPO Rules from April 2010

The EPO has made significant amendments to the implementing regulations of the European Patent Convention.  These amendments are intended to encourage applicants to improve the quality of newly-filed European patent applications, particularly in relation to requirements that are unique to European procedure.  The amendments are also intended to streamline the grant procedure and applicants will, in future, be required to address substantive objections raised by the EPO much earlier in the procedure.

In summary:

  • Search Reports (including International Search Reports prepared by the EPO) will be treated more like examination reports, in that it will be obligatory for applicants to respond.
  • The EPO will be able to force the applicant to reduce the number of independent claims before a search is performed.  Similarly, if claims are deemed too broad or too unclear to be searched, the EPO will be able to force the applicant to clarify them.
  • The opportunity to make voluntary amendments will be more limited.
  • The EPO will require applicants to explain how amendments are based on the application as filed – the absence of an explanation could lead to the application being deemed to be withdrawn.

The amended regulations will enter into force on 1 April 2010.  However, the transitional provisions mean that some applications filed before 1 April 2010 will also be affected.

Changes are also being made to the rules on the filing of divisional applications.  We have already reported on these changes.

Obligatory Responses to International Search Reports Prepared by the EPO

Under current procedure, the EPO does not issue a Supplementary Extended European Search Report for ex-PCT filings (that is, International patent applications entering the European regional phase) if it was responsible for preparing the International Search Report (ISR) in the International phase.  In such cases, the applicant may respond to the written opinion of the ISR by filing amendments on entry to the regional phase and/or shortly afterwards in response to an invitation under Rule 161 EPC.  There is currently no obligation to do either.

Under the amended rules, for this type of application, the invitation under Rule 161 EPC will require the applicant to respond to any objections in the written opinion of the ISR within a period of one month from the date of the invitation.  If a Demand has been filed in the International phase, and the EPO has also prepared the International preliminary examination report (IPER), the invitation will instead relate to the IPER. 

No response will be necessary if the applicant has filed amendments on entry to the regional phase.  Similarly, no response will be necessary if the applicant has filed amendments in the International phase which have been maintained on entry to the regional phase (unless the EPO has prepared an IPER taking the amendments into account). 

Extensions to the term for responding to the ISR (or IPER) will not generally be available.  Applications will be deemed to be withdrawn if no response is filed in time, although such cases may be reinstated as of right within an additional, specified period of two months by use of the “further processing” procedure.

The amended rules on obligatory responses to ISRs will apply to applications for which the invitation under Rule 161 EPC is issued on or after 1 April 2010.  The exact timing of the invitation under Rule 161 EPC varies, but usually falls between one and two months after the 31-month due date for entering the regional phase.

For the avoidance of doubt, the rules on obligatory responses to ISRs will not apply in relation to ex-PCT applications for which the EPO has not prepared the ISR.  On such cases the EPO will continue to prepare a Supplementary Extended European Search Report.

Subject-Matter for European Search Reports

It has long been a requirement that the claims of a European patent application must be limited to a single independent claim in each category (device, method, etc.), except in the following special circumstances enumerated in Rule 43(2) EPC:

  •  a plurality of interrelated products (for example, a transmitter and receiver);
  • different uses of a product or apparatus;
  • alternative solutions to a particular problem, where it is inappropriate to cover these alternatives by a single claim.    

This requirement is intended to ensure legal certainty for third parties by providing clarity as to the scope of protection.  However, under the current rules, the EPO is unable to enforce the requirement until after the search report has been prepared for an application.

Under the amended rules, if the EPO considers that the above-mentioned requirement is not met for a European application which is to be searched, it shall invite the applicant to indicate claims which meet the requirement and on which the search is to be carried out within a period of two months from the date of the invitation.  The applicant will not be allowed to respond by amending the claims, and will instead be expected simply to select a subset of the as-filed claims.

Extensions to the term for responding to the invitation will not be allowed and the “further processing” procedure will not be applicable.  If no response is filed in time, the EPO will perform the search on the basis of the first independent claim in each category.  The applicant may challenge the invitation either when responding to the invitation or during the subsequent examination procedure.

Under the amended rules, the EPO will also be able to issue a similar invitation asking the applicant to file a statement setting out the subject-matter to be searched if it considers that the claims are so broad or unclear that no meaningful search could otherwise be carried out.

These new rules will apply to applications for which the European Search Report is prepared on or after 1 April 2010.

Obligatory Responses to Extended European Search Reports

Under European procedure, an Extended European Search Report (or Supplementary Extended European Search Report) is issued for all direct filings at the EPO and for all ex-PCT filings for which the EPO has not prepared the International Search Report (ISR).  Under the current rules, the applicant may respond to the search opinion which forms part of the extended search report, but there is no obligation to do so.  This will change under the new rules.

Under the new rules, for direct filings at the EPO, the applicant will be invited to respond to the search opinion within the period of six months starting from the publication date of the European search report (this also remains the deadline for requesting substantive examination).  For ex-PCT filings for which the EPO has not prepared the ISR, the applicant will be invited to respond to the search opinion within a period of six months from the date of the invitation.  No such invitation will be made, however, where the search opinion is entirely positive. 

Extensions to the term for responding to the search opinion will not generally be available.  Applications will be deemed to be withdrawn if no response is filed in time, although such cases may be reinstated as of right within an additional period of at least two months through use of the “further processing” procedure.

The new rules in relation to responding to Extended European Search Reports will apply to applications for which the Extended European Search Report is prepared on or after 1 April 2010.

Amendment of European Patent Applications

Under the current rules, the applicant may amend a European patent application voluntarily at any time between receipt of the European search report and the first examination report, and once more after receipt of the first examination report. 

The amended rules will be much more restrictive.  Under the amended rules, the applicant will only be able to amend the application voluntarily in the one month term set for response to the invitation under Rule 161 EPC (for ex-PCT applications on which the EPO has prepared the ISR) or in the term set for response to the extended European search report (for all other applications).  Subsequent amendments will only be allowed with the consent of the Examiner, for example to address specific objections raised in the examination procedure.

The amended rules also require that amendments filed at any time in the procedure, including on entry to the regional phase for an ex-PCT application, must be explicitly identified and accompanied by an indication of their basis in the application as filed.  If these requirements are not met, the Examiner may demand that this information is provided within a period of one month.  Applications will be deemed to be withdrawn if no response is filed in time, although such cases may be reinstated as of right within an additional, specified period of two months by use of the “further processing” procedure.

The new rules in relation to amendments will apply to applications for which the Extended European Search Report is prepared on or after 1 April 2010.

Practical Advice for Applicants

The changes to the implementing regulations will force applicants to consider substantive objections sooner.  Particular difficulties may arise in relation to ex-PCT filings on which the EPO has prepared the International Search Report (ISR).  On such cases, a response to the written opinion of the ISR may need to be filed as soon as the second month after entry to the regional phase.  In such cases, we strongly recommend that amendments are filed on entry to the regional phase (in which case no such response will be necessary) or that instructions for responding to the ISR are provided to us at same time as instructing entry to the regional phase.

Applicants will also need to be careful when preparing claims for new European patent applications.  The filing of applications which contravene the prohibition on multiple independent claims in the same category should be avoided wherever possible, unless the claims are clearly covered by one of the exclusions to the prohibition (for example, complementary pairs such as claims for a plug and a socket).  The new rules provide that claim amendments may not relate to subject-matter which is unsearched because of the prohibition.  For example, once one of several independent claims has been selected, it will not be possible to base amendments on any of the others.  Protection for such claims could only be obtained by the filing of divisional applications.

Applicants should also note the new rule that they will only be able to amend applications of their own volition in the one month term set for response to the invitation under Rule 161 EPC (for ex-PCT applications on which the EPO has prepared the ISR) or in the six month term set for response to the extended European search report (for all other applications).  This rule may be particularly restrictive for applicants intending to coordinate the prosecution of multiple equivalent patent applications in different jurisdictions.

In future, when amendments are made to European patent applications, the basis for the amendments in the application as filed will need to be explicitly identified.  Failure to identify such basis will provoke an objection from the EPO for which a one month term will be set for response.  Applicants should therefore ensure that any proposed amendments are directly and unambiguously derivable from the application as filed, and that such basis is communicated when providing instructions to make the amendments.

Further information can be obtained from the undersigned or your usual contact at Elkington and Fife.

 

 

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