News Item
Patent prosecution rule changes agreed by EPO
6 May 2009
Further to our news item of 30 March 2009 regarding changes to filing of divisional applications, the Administrative Council of the European Patent Organisation, which supervises the European Patent Office (EPO), has decided to make further amendments to the implementing regulations to the EPC. These changes are due to come into force on 1 April 2010.
The rule changes affect the processes relating to (1) multiple independent claims, (2) search, (3) responding to search and written opinions, and (4) basis for amendments. The changes seek to improve the overall quality of applications, and increase legal certainty for third parties, and are:
1. Multiple Independent Claims
The EPO wishes to reduce the need to deal with ‘US style’ patent applications containing multiple independent claims within a category (e.g. product, process, apparatus, or use). To achieve this, a new step is to be introduced into the prosecution process wherein, prior to search, if an application contains a plurality of independent claims in a single category, the EPO will give applicants a period of two months to indicate which claims should be searched. Hence, prior to the EPO performing any search or Examination, applicants will have to decide which claims they wish to proceed with in an application. This clearly limits the time applicants have to consider what protection they wish to pursue in a patent application.
2. Search
At present, if the search division of the EPO finds that the form of the claims is such that a search cannot be carried out, a ‘no-search’ or ‘partial-search’ communication is issued. Under new rules, the EPO will instead issue a communication asking the applicant to provide a statement explaining what subject matter should be searched, and if necessary filing amendments, all within a time period of 2 months.
As with the changes regarding multiple independent claims, this change will mean that applicants will have to decide very early on in the prosecution process the claims with which they wish to proceed. Applicants may, arguably, be given more control over the searching of their application, however, in turn they will have less time to consider how to proceed with applications, and consequently some prosecution costs will be brought forward.
3. Responding to Search and Written Opinions
A key change, which will have the greatest effect on applicants, is that responding to Extended European Search Reports (EESRs), Written Opinions of the ISA and IPERs (where the EPO is the ISA/IPEA) and the Supplementary European Search Report (SESR) (where the EPO was not the ISA), which are currently voluntary, will become obligatory. For direct-filed European applications and Euro-PCT applications where the EPO was not the ISA or IPEA, applicants will be required to file a response to the EESR/SESR by the deadline for requesting examination or confirming they wish to proceed with the examination of the application. On Euro-PCT applications where the EPO is the ISA (and cases where it is both the ISA and IPEA), a response to the Written Opinion/IPER will be required within one month of a communication from the EPO.
The EPO hopes that this will speed up the prosecution process because applicants will file a first response much earlier. However, this will bring costs forward for applicants who currently choose not to respond to the EESR/SESR. In addition, applicants pursuing protection in Europe through the PCT route will incur even more costs on entry into the European Regional Phase.
4. Basis for Amendments
The EPO has also introduced rules stating that applicants must clearly identify what amendments have been made and state the basis for these amendments. Failure to comply with this rule could result in an application being deemed withdrawn. While the EPO attempts to encourage this principle at present, introducing the principle into the rules and providing a sanction for non-compliance should help the EPO to enforce this principle and again help speed up prosecution. Thus, applicants will need to ensure they provide clear and detailed basis for their amendments.
The new rule changes also see the time period for payment of further search fees in response to a unity objection being extended from the previous two to six weeks, to a set period of 2 months from invitation.
Overall, these rule changes ensure that applicants make decisions regarding their application at an early stage in the prosecution process. As a consequence, these changes may help to streamline patent prosecution before the EPO, but it would seem that the cost of achieving such streamlining will be passed onto applicants.
For more information contact your usual Marks & Clerk attorney.