Patent and Trade Mark Attorneys

EPC rule changes

Introduction

The EPO has announced various important EPC rule changes. Most of the changes will come into effect on 1 April 2010. They will have a major impact.

Broadly, the purpose of the changes is to make prosecution more efficient for the EPO by restricting the Applicant’s options. It is important to be aware of the issues at an early stage to avoid loss of rights and to take full advantage of the more limited opportunities available.

Click the following links for detailed briefing notes giving practical information and guidance.


1. Divide early!

New time limits for filing divisional applications


2. Claim concisely!

New EPO powers to crack down on number and scope of independent claims


3. Amend carefully!

Timing of voluntary amendments; need to recite basis for amendments


4. Respond early!

Response to some international phase objections and Search Opinions to become mandatory in the European regional phase

Summary

  • As the opportunities for filing divisional applications will be severely restricted, it will be essential to make an early decision on whether divisional applications should be filed. This also affects existing pending applications, which should be reviewed within a grace period ending on 1 October 2010 to see whether any divisional applications are currently required.
  • Clarity objections to multiple independent claims in the same category may be raised at the search stage, rather than only at the examination stage as at present. If there is still an opportunity for voluntary amendment before searching, claim sets should be reviewed to reduce them to one independent claim per category if possible. If this is not possible, it may help to provide a pre-emptive explanation that one of the Rule 43(2) EPC exceptions applies.
  • New constraints on the timing of voluntary amendments mean that there is only one opportunity for voluntary amendment and this will usually arise before the examination stage.
  • Applicants will have to formulate response strategies much earlier than is currently necessary. The Extended European Search Report or (if drawn up by the EPO) the Written Opinion or International Preliminary Examination Report will now, if negative, require a response. They should therefore be considered equivalent to an EPO Examination Report. If the EPO was the ISA or IPEA on a PCT application, a negative Opinion or IPER will require a response upon, or soon after, regional phase entry.
  • A new obligation on Applicants to indicate the basis for amendments in the application as filed: every amendment filed at the EPO will have to be accompanied by a statement setting out the line-by-line, page-by-page basis for the amendment.
  • A prohibition on amendment of claims to relate to unsearched subject matter.