IP Law Bulletin

In an effort to improve patent quality and accelerate patent examination, the European Patent Office (EPO) adopted a number of rule changes that are set to take effect on April 1, 2010. This article summarizes some of the more-significant changes.

Divisional Applications (Rule 36)

At present, European divisional applications can generally be filed at any time during the pendency of the application to which they claim priority.

Under the new rules, divisional applications must also be filed within 24 months of the first communication from the Examining Division issued in the family or within 24 months of the first lack of unity objection raised in the immediate parent application, whichever is later. It is still required that the immediate parent application be pending for a claim of priority to be made.

Although this new divisional rule applies retroactively to pending applications, a grace period has been established that gives applicants in such cases at least until October 1, 2010, to file divisional applications. Accordingly, applicants should review all of their pending European applications to determine the need for divisional filings. This is especially true for applications that received a first official communication more than two years ago.

Mandatory Response to Search Reports (Rule 161 & Rule 70a)

The new rules also make responses to search reports compulsory in many cases. For example, in PCT applications where the EPO acts as the International Searching Authority (ISA), the EPO will now invite applicants to submit a response to the Written Opinion of the International Search Report (ISR) shortly after entering the European regional phase of prosecution. A response to this invitation is mandatory and must be filed within one month of the EPO communication. This relatively short period for response should be considered when applicants select the ISA for their PCT application, and applicants should begin preparing a response strategy very soon after the ISR is published.

For direct European filings or for PCT applications in which the EPO was not selected as the ISA, the new rules require applicants to respond to objections raised in the European Search Report, a practice that had typically been optional in the past.

Identification of Claims to be Searched (Rule 62a)

Currently, the EPO typically searches all independent claims in an application, even if there are multiple independent claims in the same category (e.g., product, process, etc.). In such cases, the EPO will often require the applicant to restrict the claims during examination to just one claim per category.

Under new Rule 62a, only one independent claim will be searched for each category. When an application contains more than one such claim, the EPO will invite applicants to indicate the claim that should be searched. Unless the applicant responds within two months, the EPO will simply search the first claim in each category.

In view of this rule change and the new time limits on filing divisional applications, applicants should carefully review any applications that contain multiple independent claims to determine the need for divisional filings.

Identification of Subject Matter to be Searched (Rule 63)

In contrast to present practice, the EPO will be permitted under the new rules to require applicants to identify the subject matter to be searched, for example when the EPO deems that the claims are too broad or unclear to conduct a meaningful search, or that the claims are directed to non-patentable subject matter. In such cases, a two month deadline for responding will be set by the EPO.

Amendments to European Applications (Rule 137)

Although most applicants already adhere to this practice, it will now be mandatory for applicants to identify the support in the original application for any amendments to the application.

In addition, changes to Rule 137 reduce the number of opportunities for applicants to make voluntary amendments. For example, while applicants currently have the right to amend an application twice as a matter of right – once after the European Search Report issues and once during examination – the new rules eliminate this latter opportunity. Instead, applicants can only make voluntary amendments in response to the European Search Report. Further amendments can only be made with permission of the Examining Division.

Conclusion

The upcoming European rule changes require applicants to elect subject matter and address claim objections at a much earlier stage of prosecution. They also make it more difficult to protect a number of distinct inventions in a single application filing and greatly reduce the time period in which divisional applications can be filed. These changes can therefore have a dramatic impact on prosecution strategy and budgeting. Applicants should now review applications more closely before filing in Europe, be prepared to file substantive responses much sooner than usual, and work closely with their attorneys to ensure that no loss of rights occur due to missed divisional filing deadlines.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.