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EPO Rules Change Again (this time for the better!)

In the recent past, the European Patent Office has introduced a number of rule changes affecting the procedure for obtaining a European patent. In particular, on 1 April 2010, new rules came into effect, regarding deadlines for filing divisional applications, restrictions on the use of multiple independent claims, the mandatory filing of responses to search opinions, and restrictions on the filing of voluntary amendments. These rule changes have been widely criticised for the burden that they place upon applicants and their representatives, and for uncertainties in the way that they will be applied.

A number of further rule changes have now introduced that ease that burden to some extent or at least clarify some of the uncertainties.

Divisional applications

On 1 April 2010 the rules regarding the deadline for filing a divisional application were changed. Previously, a divisional application could be filed at any time while its preceding (“parent”) application was pending. Now,a divisional may only be filed within twenty four months of eitherthe first communication issued by the Examining Division in respect of the earliest application in the series or (if later) a communication in which the Examining Division raised an objection of lack of unity of invention for the first time.

After some confusion regarding what constitutes a “communication from the Examining Division”, the EPO has clarified this matter by further amending the rules to define a communication from the Examining Division is a communication under either Article 94, paragraph 3 and Rule 71, paragraphs 1 and 2 (an examination report) or Rule 71, paragraph 3 (a notice of allowance). This amendment came into effect on 26 October 2010.

Supply of Search Results

In an effort to improve efficiency in search and examination, from 1 January 2011 the EPO will require search results from the Patent Office of first filing to be submitted at the time of filing a European application or of entering the European regional phase of a PCT application. Failure to do so will not bring immediate sanctions, but, if it is noted during examination that the search results have not been provided, the applicant will be invited to do so within two months. Failure to meet this deadline will result in the application being treated as withdrawn.

Mandatory response to Search Report

Since 1 April 2010, it has been mandatory to file a substantive response to the European search report and written opinion. However, depending on the nature of the European application, there were two widely different deadlines for filing this response. In the case of a direct (non-PCT) European application, the period for filing of the mandatory response is currently six months from the date of publication of the European search report. For a European application based on a PCT application for which the EPO acted as the international searching authority (ISA), on the other hand, soon after entry to the regional phase the applicant is currently given a period of only one month in which to file the response. For a PCT application on which the EPO carries out a supplementary search, the EPO may set a period of from two to six months. Past practice was two months, but the EPO now appears to be permitting six months.

The European Patent Office has now announced a change to the rules, allowing six months to respond in all cases. This will take effect for all search reports issued on or after 1 May 2011.

Amendment after allowance

When a European patent application is allowed, the applicant is sent a copy of the text on which the European Patent Office intends to base grant of a patent, and the applicant is asked to approve of that text. It is the practice of EPO examiners to accept minor corrections and amendments put forward by the applicant, but there is no systemin place for not approving the text.

For any notice of allowance issued on or after 1 April 2012, the applicant will be given the opportunity to make a reasoned response and to submit amendments or corrections to the text. If approved by the examiner, a patent will be granted based on the amended text; if not approved, examination of the application will resume. Equivalent rule changes will also be introduced relating to the corresponding situations in opposition and limitation proceedings.


25 November 2010

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