Patent Baristas

The European Patent Office (EPO) has announced more important rule changes, as part of its drive to speed up prosecution without apparently requiring any more from its examiners.  The new rules will come into force on 1 April 2010.

Of particular note is that two of the new rule changes are actually beneficial to applicants!

Compulsory response to European search reports

At present, an applicant does not have to reply to any search report that the EPO issue.  However, this will change when the new rules come into force.

From that date the applicant will have to respond to objections raised in the opinion accompanying a European search report. This applies to extended search reports, raised on European patent applications filed at the EPO, and supplementary search reports, raised in the European regional phase of a PCT application where the EPO was not the International Search Authority (ISA).

The deadline for responding to an extended European search report will be 6 months from the publication date of the search report, if a request for examination has not already been filed. However, if a request for examination has been filed, the deadline will be 2 months from a communication from the EPO.

If an applicant fails to respond before the deadline, then the application will be deemed withdrawn, but can be revived using “further processing”.

The EPO will require a full response to the objections.

Compulsory response to written opinions and international preliminary examination reports

If the EPO is the ISA for a PCT application, it does not carry out a search in the European regional phase. For those applications, the applicant must file a response to any objections in the written opinion raised in the International phase of the PCT application.

The applicant will have to file the response shortly after entry into the European regional phase. The EPO will set a 1 month deadline to file the response and, in the same communication, invite the applicant to pay claims fees and/or file voluntary amendments.

Again, the EPO will require a full response to the objections.

Amending a European patent application

Under the new rules an applicant must identify, and provide basis in the original text, for all amendments to the application.

If the applicant does not, then the EPO will set a 1 month deadline to do so. If the applicant still fails to provide the information, the application will be deemed withdrawn, but can be revived using “further processing”.

Multiple independent claims

If an application contains several independent claims, the EPO, before carrying out the search, will ask an applicant which claims are to be searched.  They will give the applicant 2 months to provide this information. If the applicant does not, then the EPO will search only the first claim in each category (product, method, use).

This change will allow applicants to direct the EPO to a search report on the subject matter of most interest to them. It is a definite improvement on the current practice, where the applicant is not asked for such direction.

Incomplete search

If the EPO considers that it is impossible to carry out a meaningful search on an application, it will invite the applicant to indicate, within 2 months, which subject matter it should searched.

If the applicant does not reply in time, or does not identify matter that the EPO can search, then the EPO will issue a partial search report or a declaration that they cannot carry out any meaningful search.

This change will help applicants in fields which often face objections that their application relates to excluded subject matter or is defined unclearly.

Divisional applications

The recently announced changes in divisional practice are discussed separately here.

Please do not hesitate to contact us here if you have any questions about the new rule changes.

This information has been prepared by Forresters. It sets out the present positions, as presently understood, on the basis of the latest information available, from various sources but it must not be relied upon and does not constitute legal advice. No liability will be accepted for any errors or omissions. Detailed advice should always be requested with regard to specific circumstances of any particular case, or issue, in any jurisdiction.