The Administrative Council of the EPO decided, in March 2009, to make significant changes to the Implementing Rules of the European Patent Convention (EPC). These changes will enter into force on April 1, 2010 and will have a significant impact on the grant procedure before the EPO.

Introduction of a new time limit for filing divisional applications

Up until now, a divisional application could be filed relating to any pending earlier European patent application at any stage of the grant procedure of this earlier application. Amended Rule 36(1) restricts this possibility by introducing a new time limit to file a divisional application.

From 1 April 2010, a divisional application can be filed within a time limit of 24 months starting from either the first official communication issued by the Examining Division in respect of the earliest application for which a communication has been issued (so-called “voluntary” division) or from any communication in which an objection of a lack of unity has been raised for the first time in respect to the earlier application. The former condition relying on the pendency of the earlier application shall still apply.

Regarding the European applications for which these time limits have already expired or will expire before 1 October 2010, a transitional period is provided until 1 October 2010 for filing divisional applications.

Multiple independent claims in the same category at the Search stage

The EPO usually raises an objection against applications comprising multiple independent claims in the same category (product, process, use, apparatus) during the Examination phase of these applications.

With the introduction of the new Rule 62bis, a similar objection is likely to be raised earlier in the procedure, before the issue of the European Search Report. The applicant will have two months to indicate the claims which should be the subject of the search or to file observations against this objection.

If the applicant fails to respond or to provide convincing arguments, the search will be carried out on the first independent claim in each category. The Examining Division will later invite the applicant to limit the claims to the searched claims, unless the Examining Division finds that the former objection was not justified.

Difficulties in performing a meaningful search

At present, when the Search Division considers that it is impossible to carry out a meaningful search into the state of the art on the basis of all or some of the subject-matter claimed, for instance in the case where claims lack of clarity, it shall either issue a reasoned declaration to that effect or draw up a partial search report. With the modified Rule 63, the Search Division will first invite the applicant to indicate the elements which should be searched within a period of two months. If the applicant fails to respond or to provide convincing arguments, the old procedure will be applied.

The applicant is therefore given a chance to indicate the object which should be searched in his view, before the EPO performs the search.

Compulsory response at an earlier stage of the procedure

It is currently advised, but not compulsory, to respond to the search report issued by the EPO with a written opinion. Without any response from the applicant, the Examining Division generally merely refers to the written opinion in its first official communication. In the case of EURO-PCT applications, the current rules do not require a response to the communication under Rule 161 issued shortly after the entry into European phase in order to allow the applicant to amend the claims to be examined by the EPO.

According to new Rule 70bis, it shall be compulsory to respond to the European Search Reports from 1 April 2010 if the written opinion contains objections. Such a response shall have to be made within either the time period for requesting the examination (6 months from the publication of the European Search Report) when examination has not yet been requested or within the period specified by the EPO for confirming the examination request when the examination has already been requested.

The modification of Rule 161 makes it also compulsory to respond to the objections raised during the international phase, when the EPO has acted as the administration in charge of the international search or the international preliminary examination, within a period of one month. This rule shall apply to applications for which a communication according to Rule 161 is issued after 1 April 2010.

These modifications will result in an acceleration of the grant procedure by, on the one hand, equating the EPO written opinion attached to the search report with a first official communication and, on the other hand, imposing a compulsory response to the first communications issued by the EPO, be it for direct EP applications or for EURO-PCT applications.

Restricted possibilities to amend the European application

In conjunction with the establishment of a compulsory response to the search report, Rule 137 (relating to the amendments of the European patent application) will undergo substantial changes from 1 April 2010 on.

A single opportunity will be left to amend the application in response to the Extended European Search Report according to amended Rule 137(2). Any other amendments will need the consent of the Examining division according to amended Rule 137(3). Opportunities to amend the application are therefore reduced when compared with the current practice.

Moreover, the applicant does not have until now any obligation to indicate the basis for amendments in the application as filed. With amended Rule 137(4), it will become compulsory to identify the introduced amendments (for instance by striking out the deleted parts and underlining the added parts) and to indicate the basis for these amendments in the application as filed. The Examining Division shall otherwise invite the applicant to provide these indications within a period of one month. The application shall be deemed to be withdrawn in the absence of any response to this invitation.

Amendments regarding the fees collected by the EPO

From 1 April 2010, the amount of most of the fees collected by the EPO shall be increased by 5 %. Moreover, with the amendment of Rule 64, a time limit of two months (and not any longer one month) will be granted to pay any additional search fee(s) in cases where the search division considers that the claims lack of unity and issues a partial search report.

New version of the EPO Guidelines for the Examination

The EPO has also published on its website a draft version (in English only) of the new Guidelines applicable as of 1 April 2010.

(via Cabinet Plasseraud)

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