New EPO rules - an update

Important new rule changes will take effect at the European Patent Office (EPO) on 1 April 2010. The most important of these changes are briefly summarised below.

Independent claims

The EPO is quite strict in requiring a European patent application to contain only one independent claim in a given category (eg product, process, apparatus, use, etc). Many applications, particularly those originating overseas, do not comply with this requirement when filed, but the EPO has hitherto permitted the issue to be resolved during examination.

This will change on 1 April 2010. Under the new rules, if an application contains more than one independent claim in the same category, the EPO will invite the applicant to choose which one of those claims is to be made the subject of the search. Two months will be given for the choice to be made, and it will not be possible to make amendments to the claims at that point. If the applicant does not make a choice, then the EPO will simply search the independent claim of each category that occurs first in the claim set, and only those claims can subsequently be examined. To protect the subject matter of any other claim will require the filing of a divisional application.

The effect of this change is to "front-load" the application process, as it will oblige applicants to consider at an early stage exactly what claims they wish to pursue. It is particularly important that the most important claims of the claim set appear first.

Mandatory responses to search opinions

Search reports from the EPO are accompanied by an opinion on patentability, to which the applicant may respond with comments and amendments. More often than not, however, practice has been not to do so, but simply to await the issuance of an examination report before making a substantive response.

Once again, this practice will have to change from 1 April 2010. A response to the search opinion will be mandatory, and failure to respond will result in the application being deemed to be withdrawn. Similarly, where the EPO has acted as international searching authority (ISA) on a PCT application, a response to the Written Opinion of the ISA (WOISA) will have to be filed soon after entry to the EPO regional phase. These changes too will front-load the patent prosecution process, forcing applicants to commit to particular forms of claim at an earlier stage than they have been accustomed to.

These new rules will apply for all applications on which the search report issues from 1 April 2010.

Voluntary amendment

Applicants have previously had the opportunity to submit voluntary amendments to a European application at any time between receipt of the search report and issuance of the first examination report. As from 1 April 2010, however, this will only be possible either as part of the mandatory response to the search opinion (see above), or wiithin one month of an invitation to do so that will issue soon after regional phase entry of a PCT application.

Divisional applications

As a general rule, a European patent may relate only to a single invention. Where an examiner decides that an application relates to more than one invention, it is necessary to restrict the application to one of those inventions; to pursue the other, a so-called "divisional" application must be filed. In the past, the EPO's rules on when a divisional application can be filed have been quite liberal. However, that will change with the advent of the new rules.

Hitherto, it has been possible to file a a divisional application at any time while its preceding ("parent") application is pending. It has also been possible to file so-called "cascading" divisionals, ie a divisional to a divisional, and so on. This has meant that it has been possible to keep patent applications pending for many years.

However, under the new rules, it will only be possible to file a divisional application within two years of either (a) the first communication issued by the examining division of the EPO regarding the earliest European patent application in the series, or (b) if later, the first occasion on which a specific objection of lack of unity of invention is raised.

As noted above, the new rules will take effect on 1 April 2010 and will apply to divisional applications filed from that date. However, under transitional provisions, for currently pending applications, the deadline for filing divisionals will not expire before 1 October 2010 (provided, however, that the parent application is still pending).

Under the new regime, the filing of cascading divisional applications will be severely curtailed, and it will be necessary to make decisions on (and incur the expense of) divisional applications at a much earlier stage in the application process.

Summary

All the rule changes described above will increase the burden on applicants for European patents and their representatives. Decisions that hitherto have been delayed, sometimes for as much as several years, will have to be made at a much earlier stage in the patent prosecution process, and consideration as to how best to proceed will need to be given to applications soon after they are filed or soon after they enter the EPO regional phase under the PCT.

AdamsonJones
19 February 2010