When a PCT patent application enters the regional phase before the European Patent Office (EPO) it is currently possible to defer making amendments to address the prior art citations raised in the International Search until after the first examination report is issued. This is generally twelve months or more from the date of entry to the regional phase.
Rule changes coming into effect on 1 April 2010, however, will lead to a major change of practice. In future, the EPO will issue a communication shortly after regional phase entry, requiring the applicant to comment on the objections raised in the international phase, and to amend to differentiate the claimed invention from the prior art. Furthermore, the period permitted for response will be only one month.
This change of practice will introduce a considerable burden on applicants and their representatives. The need to consider the prior art at a much earlier stage will place us under time pressure, and it will become very important to consider the amendments that are to be made immediately upon entry to the regional phase.
We shall be revising our procedures for handling regional phase entry to take account of the new rule, and to ensure that clients are given as much time as possible to consider the issues that need to be addressed.
19 November 2009