Page Hargrave - Patent and Trademark Attorneys
Bristol: +44 (0)117 927 6634 | London: +44 (0)20 7269 5730
News
EPC Rule Changes coming into force 1 April 2010
Stricter Time Limit on the Deadline for Filing Divisionals
A cut-off date for the filing of divisional applications will be introduced. A divisional may only be filed:
-within 24 months from the first examination report issued on the original parent application; or
-if a non-unity objection is raised by the examiner for the first time during examination of an application, within 24 months starting from the date of the communication wherein the non-unity objection was raised.
The new rule will apply to all applications that are pending at 1 April 2010. If the 24 month time limit expires before 1 April 2010 or would expire within 6 months of that date, then a transitional provision will allow for divisional applications to be filed up to 1 October 2010.
Multiple Independent Claims in the Same Category
The EPC currently provides (with few exceptions) that more than one independent claim in the same category (e.g. apparatus, method) is not allowable. Presently, this rule is enforced at the substantive examination stage. Under the new rule, applicants will be invited at the search stage to specify within two months which of the independent claims should be searched. If the applicant fails to respond within the time limit, the search will be carried out on the basis of the first independent claim in each category. Any unsearched claim must be deleted from the application during substantive examination and pursued in a divisional, if desired.
The new rule will apply to all applications for which the European search report or the supplementary European search report is drawn up on or after 1 April 2010.
Searching Complex Applications
If the EPO considers that a meaningful search is not possible due to lack of support, clarity or conciseness (i.e. a "complex application"), the applicant will first be invited to file, within a period of two months, a statement clarifying the subject matter to be searched. If the applicant fails to respond within the time limit, then a reasoned declaration that a search is not possible or a partial search report will be issued. At the examination stage, the applicant will be invited to restrict the claims to the searched subject matter.
The new rule will apply to all applications for which the European search report or the supplementary European search report is drawn up on or after 1 April 2010.
Mandatory Response to Search Opinion, Written Opinion or International Preliminary Examination Report (IPER)
Another significant change will be to force applicants to respond to a Search Opinion or Written Opinion accompanying the search report or an IPER rather than waiting until the examination stage.
Euro-direct applications - applicants must submit a response to deficiencies noted in the search opinion within the period for filing the request for examination or when confirming that the applicant wishes to proceed with examination (i.e. six months from mention of publication of the search report). The new rules will take effect for applications where the search report is drawn up on or after 1 April 2010.
Euro-PCT applications where the EPO was the International Search Authority (ISA) - applicants must respond to deficiencies noted in the Written Opinion or the IPER within one month of receiving an invitation following EP phase entry. The new rules will take effect for applications where the search report is drawn up on or after 1 April 2010.
EURO-PCT applications where the EPO was not the ISA and a supplementary search report is drawn up with an accompanying Search Opinion - applicants must file a response to the Search Opinion within the period specified for indicating whether the applicant wishes to proceed further with the application. The new rules will take effect for such applications where a communication setting a one month term for voluntary amendment following EP phase entry is not issued by 1 April 2010.