• Other EPO Rule Changes on 1 April 2010

    Mandatory Response at the Search Stage

    Other important changes to the Implementing Regulations of the EPC come into force on 1 April 2010 and are aimed at speeding up prosecution by forcing applicants to focus on the search report rather than permitting remarks and amendments to wait until the examination stage. These are:
    • In the case of a Euro-direct application, it will become obligatory to file a response to the Search Opinion. This will be due within the period for paying the designation and examination fees (i.e. six months from publication of the search report) - New Rule 70a(1).
    • In the case of a Euro-PCT application, it will become obligatory to file a response to an IPRP (Chapter I) or an IPRP (Chapter II) drawn up by the EPO, within one month of receiving an invitation following EP phase entry - New Rule 161. We will need a copy of the International Search Report and the Written Opinion at the earliest opportunity. These are not available from the public WIPO file history until 30 months from priority, so clients are advised to send these to us with their instructions for EP phase entry.
    • In the case of a Euro-PCT application for which the International Search Report was drawn up by another office, and the EPO draws up a Supplementary Search Report with an accompanying Search Opinion, it will become obligatory to file a response to the Search Opinion - New Rule 70a(2). A time period (typically 4 months) will be set for doing so and for confirming the desire to proceed.

    No Further Amendment “As of Right”

    Whereas previous Rules 137(2) and (3) permitted amendment as a matter of right once upon receipt of the European Search Report and again before the Examining Division, the second opportunity has been eliminated by amendment to Rule 137(3). Any further amendment after response to the Search Opinion or IPRP is at the discretion of the Examining Division. In the past, wide discretion has been exercised, but there has been a tightening up in recent years.

    We therefore consider it important to prepare thorough arguments and, if necessary, amendments in response to any objections raised by the EPO at the search stage or in the International phase. Applicants should at a minimum request oral proceedings as a precaution. If the Examiner does not foresee grant of a patent or considers the response to the objections to be unsatisfactory, the first communication from the Examining Division may be a summons to oral proceedings.

    Note that this rule change may make Chapter II of the PCT more attractive, allowing “two bites at the cherry” before entering the European Regional Phase.

    Multiple Independent Claims

    The EPC currently provides that, with certain exceptions, a European patent application may only contain one independent claim in the same category of product or process.* This rule is soon to be enforced at the search stage. Applicants will be given 2 months to select which claims are to be searched (New Rule 62a).

    The unsearched claims can only be pursued via a divisional application, provided that the time limit for filing a divisional under new Rule 36 has not yet expired.

    Searching “Complex Applications”

    At present, the Search Examiner has the option of declaring that a meaningful search is not possible, in particular where the subject matter to be claimed is not “technical” in the sense that it is excluded from patentability under Articles 52(2) and 53 EPC. Similarly, a partial search report may be drawn up where there is lack of unity in the subject matter claimed.

    After 1 April 2010, in such cases and more generally in cases that lack support, clarity or conciseness to an extent that no meaningful search is possible (which the EPO is calling “complex applications”), the EPO will invite the applicant to “clarify the subject matter to be searched”. A twomonth period will be given for reply (Rule 63). There will be no opportunity for further processing (and no restitution).

    If the applicant fails to reply, or if the reply is not sufficient to overcome the deficiency, the EPO will either issue a reasoned declaration stating that it is impossible to carry out a meaningful search or, as far as is practicable, will draw up a partial search report.

    As with the present rules, any subject matter which has not been covered by a partial search report cannot be pursued later in the procedure. It can be made the subject of a divisional  application, provided the sun has not yet set under new Rule 36.