European Patent Convention - rule changes
As of 1 April 2010 a number of changes to the Implementing Regulations to the European Patent Convention (EPC) will take effect which will change significantly procedure and practice before the European Patent Office (EPO).
Applications containing a plurality of independent claims - Rule 62a (new)
For an application containing a plurality of independent claims in the same category (e.g. apparatus, product, method, etc.) and the subject matter of which is not considered to relate to one of:
a plurality of interrelated products;
different uses of a product or apparatus; or
alternative solutions to a particular problem, where it is inappropriate to cover these alternatives by a single claim,
the EPO will invite the applicant to indicate, within two months from such invitation, the independent claims, in each category, on which the search is to be carried out.
If no such indication is provided, the search will be carried out on the basis of the first claim in each category and the applicant will subsequently be invited to restrict the claims to the subject matter searched unless it is found that the objection to the plurality of independent claims was not justified.
Further processing will not be available for the two month time limit set by this new rule.
Incomplete search - Rule 63 (amended)
Currently, if the EPO considers that an application does not comply with the EPC to such an extent that it is impossible to carry out a meaningful search into the state of the art on the basis of the claimed subject matter, the EPO will issue a declaration to that effect, or draw up a partial search report.
However for the same situation under the amended rules, the EPO will invite the applicant to file a statement indicating the subject matter to be searched and the applicant has two months to respond to such an invitation.
If the statement is not filed in time, or is not sufficient to overcome the objection that the application fails to allow a meaningful search to be carried out, then the EPO will then issue a declaration, similar to that at present, that it cannot carry out a meaningful search into the state of the art on the basis of all or some of the subject matter claimed, or issue a partial search report.
Such a declaration or partial search report is issued where, for example: the claims lack support (e.g. a broad or speculative claim supported by only a limited disclosure covering a small part of the scope of the claim); the claims lack conciseness (e.g. where there are so many claims, or so many possibilities within a claim, that it becomes unduly burdensome to determine the matter for which protection is sought); or, the claims lack clarity (e.g. where the applicant's choice of parameter to define the invention renders a meaningful comparison with the prior art impossible, perhaps because the prior art has not employed the same parameter, or has employed no parameter at all).
Further processing is not available for the two month time limit set by this rule.
Response to the extended European search report - Rule 70a (new)
Currently, the applicant is not required to file a response to any objections noted in the extended European search report.
However, under the amended rules, the EPO will invite the applicant to comment on the extended European search report and, where appropriate, correct any deficiencies noted in the opinion accompanying the European search report and to amend the description, claims and drawings within a six month period from publication of the European search report. This six month period corresponds to the period from the publication of the European search report in which the applicant should request examination.
Where the request for examination has been filed before the European search report has been drawn up, or in the case of a supplementary search report for a Euro-PCT application, the EPO will invite the applicant to comment on the extended European search report and, where appropriate, invite the applicant to correct any deficiencies noted in the opinion accompanying the European search report and to amend the description, claims and drawings within the period specified (currently two months) for indicating whether he wishes to proceed further with the application.
For either case, if the applicant does not respond to the invitation with comments, arguments and/or amendments, the application will be deemed withdrawn.
Amendment of the European patent application - Rule 137 (amended)
Currently an applicant may make voluntary amendments to an application once the search report has issued, and again in response to the first examination report.
However, under the amended rules, the applicant may only make voluntary amendments when responding to the invitation to correct deficiencies noted in the opinion accompanying the European search report or, where the EPO draws up a supplementary search, in response to a communication issued by the EPO prior to issue of the supplementary search report. In this second case, the application as amended shall serve as the basis for the supplementary search.
Although in the past, applicants were requested to indicate the basis in the application as originally filed for amendments made, such requests were not strict requirements. However, the amended rules now require an applicant to clearly identify amendments and indicate their basis in the application as filed. Failure to meet either requirement shall result in the application being deemed to be withdrawn.
Amendment of the application [Euro-PCT] - Rule 161 (amended)
For European regional processing of PCT applications, if the EPO has acted as international search authority (ISA) and, where a demand has been filed, also as international preliminary examination authority*, it shall give the applicant the opportunity to comment on the written opinion of the International Searching Authority or the International Preliminary Examination Report and, where appropriate, it will invite the applicant to correct any deficiencies noted in the written opinion of the international search report or in the international preliminary examination report and to amend the description, claims and drawings within the very short period of one month from the communication. If the applicant does not comply with or comment on the invitation, the application shall be deemed withdrawn.
The preceding paragraph will be relevant for international search reports that are received now during the international phase. Applicants and associates are advised that instructions for European national phase entry should be accompanied by instructions for reply to the written opinion of the international search report (where the EPO was ISA) since the one month time limit set by the communication from the EPO is too short to start preparing the response only upon receipt of the communication.
Enquiries regarding this notice may be sent to your usual W. P. Thompson & Co. contact or http://www.wpt.co.uk/contact/index.jsp
* On a literal reading, both conditions need to be met. However, we believe this is unlikely to be the intent of this rule. We are seeking clarification from the EPO on this point, and we will update this notice once such clarification is forthcoming.