Important rule changes at the European Patent Office

The European Patent Office will introduce rule changes on 1 April 2010 which will have an effect on two aspects of European patent practice.

These are:
1) the filing of divisional patent applications, and
2) the subject-matter to be searched and the subsequent prosecution of such subject-matter.

1. Divisional applications

Presently, it is possible to file a divisional application at any time from any pending European patent application. The divisional application must be directed to subject-matter which is disclosed in the earlier application. A divisional application may also be filed from a pending application which is itself a divisional application.

As of 1 April 2010 a time limit of 24 months will be placed on when a divisional application may be filed. This time limit is triggered by the issuance of the first Communication from the Examining Division in the earliest application. However, should a non-unity objection subsequently be raised in an application, a new 24 month term within which one or more divisional applications may be filed will be triggered by the issuance of a Communication from the Examining Division drawing the Applicant’s attention to the lack of unity.

Since the 24 month term will apply to all divisional applications originating from the earliest application, all divisional applications must be filed within the initial 24 month term unless a non-unity objection is subsequently raised in any one of the applications.

In the event that a non-unity objection is raised, it is important to note that any subsequent divisional application need not necessarily be directed to the subject-matter deemed non-unitary.

In practice, in order to keep open the possibility of filing a divisional application for as long as possible, it may be worthwhile provoking a non-unity objection when filing a divisional application within the initial 24 month term.

Although these rule changes will come into force on 1 April 2010, a six month transitional provision expiring on 1 October 2010 is applicable for all pending applications for which the 24 month time limit has already expired. Similarly, if the 24-month term is still running on 1 April 2010, it will continue to do so at least until 1 October 2010.

In view of the above, we urgently encourage our clients to review all pending European patent applications to assess the need to file divisional applications, bearing in mind that, for cases in which the earliest Communication issued prior to 1 October 2008, the deadline for filing further divisional applications will expire on 1 October 2010 (unless of course a non-unity objection is subsequently raised).

2. Search and subsequent prosecution

With a view to improve the quality of incoming patent applications and streamline the grant procedure, rule changes will come into force on 1 April 2010 which will a) allow the EPO to restrict the extent of the European search and b) force the Applicant to respond to patentability opinions from the EPO.

a) The extent of the European search

If a European patent application is filed with more than one independent claim of the same category (product, apparatus, method, use), the European Patent Office may, prior to commencement of the search, invite the Applicant to indicate within a non-extendible period of two months upon which independent claim he/she would like to the European search to be based. If the Applicant fails to respond to the invitation the European search report will be drawn up on the basis of the subject-matter of the first independent claim of each category. The non-searched claims will subsequently have to be deleted.

If the European Patent Office considers that the claims as filed are so unclear that no meaningful search can be performed, the Applicant will be invited to indicate within a non-extendible term of two months upon which subject-matter he/she would like the search report to be drawn up. If the Applicant fails to respond to the invitation the European Patent Office will issue a reasoned declaration stating that it is impossible to conduct a meaningful search.

b) Response to patentability opinions

Presently, when drawing up the search report the search examiner also prepares a patentability opinion in the form of a written opinion identifying any objections which he/she may have to the searched application documents. The written opinion is communicated to the applicant for information purposes only, though the applicant may file a voluntary response. Should the applicant decide to proceed with the application by paying the examination fee, the Examining Division assumes responsibility for the application and, in virtually all cases, reissues the written opinion as a first Communication. Depending on the workload of the primary examiner, the first Communication may be issued several years after paying the examination fee.

For all European applications for which a search report and written opinion are established on or after 1 April 2010, it will be mandatory for the applicant to address any objections raised in the written opinion by no later than the expiry of the time limit for paying the examination fee. If amended claims are filed, the applicant will be obliged to identify the amendments and explain where there is basis for the amendments in the application documents.

When entering the European regional phase of a PCT application for which the EPO has acted as the searching and/or preliminary examining authority, the applicant will be obliged to respond to the written opinion/examination report within a period of two months from being notified of the Rule 161 notification, unless claim amendments have been filed under PCT Article 19 or PCT Article 34. In other words, if there are outstanding objections upon entry into the European regional phase, the applicant will be obliged to address these objections within the above-mentioned two-month period.

When entering the European regional phase of a PCT application for which the EPO has not acted as the searching and/or preliminary examining authority, the EPO will be obliged to draw up a supplementary European search report. When doing so, the EPO will also establish a written opinion identifying possible objections. Again, the applicant will be obliged to file a response to such a written opinion. The term for filing a response will coincide with that for informing the EPO that the applicant wishes to proceed further with the application. Although that term is presently two months, it is envisaged that the EPO will give the applicant a six month term for performing this act.

In view of these forthcoming changes, we strongly recommend that the claims as originally filed comply with the formal requirements of the EPC and that applicants be prepared to submit a timely, fully reasoned response to any patentability opinion from the EPO.

Of course, should you have any questions concerning these rule changes or need any further information, please do not hesitate to contact us.

// Andrew Hammond