Update New EPC rules

[naam],

With this letter we once more want to remind you about the Rule changes in the European Patent Convention that will take effect as of April 1st, 2010, and provide a short summary of the most relevant implications of those Rule changes. For a more extended discussion, we refer to our mailing dated October 21st, 2009, and to our MIP publication.

Divisional applications

From 1 April 2010, divisonals can only be filed within 24 months of the issuance of the very first communication (Office Action) from the Examining Division in the earliest application. Nonetheless, where the examiner raises a non-unity objection, divisional applications may also be filed within 24 months of the communication wherein the lack of unity objection was raised, for the first time.

There is a transitional period of 6 months available for filing divisional applications where the 24 month period has already expired or will expire before 1 October 2010.

Advice: Applicants are advised to review pending European patent applications to decide whether divisional applications should be filed before the end of the transitional period at 1 October 2010. If you desire to file a divisional, please instruct us well before 1 October 2010.

Multiple independent claims in one category and complex applications

In case an application unallowably contains more than one independent claim per category (product, apparatus, process or use; cf. Rule 43(2) EPC for further details) the applicant will be required to indicate, within a period of two months of notification, one independent claim from each category to be searched.

In cases where the search division is confronted with "complex" applications, which under current practice would lead the search division to issue a declaration that it is not possible to carry out a meaningful search, the applicant will be requested to submit a statement indicating the subject matter to be searched. Such a statement needs to be filed also within a period of two months.

In both cases, unsearched subject matter can only be pursued in one or more divisional applications.

Advice: In order to reduce costs and the risks of losing rights, it is suggested to inform your European agent well ahead of the intended filing date and have the European agent review the claims.

Mandatory response to the search opinion

In case of an EP-direct application, the applicant is required to respond to the opinion issued with the search report within the period for filing the request for examination (i.e. within six-months of publication of the search report). Missing this time limit can be remedied with further processing.

The mandatory response is the one and only chance for voluntary amendments. Later proposed amendments are only accepted at the discretion of the Examiner.

For a Euro-PCT application where the European Patent Office acted as the ISA or IPEA or issued a Supplementary International Search Report, the applicant will receive a communication shortly after European phase entry requiring the applicant within a time limit of one month to respond to objections raised in the WO-ISR or IPRPII or SISR.

For a Euro-PCT application, where the European Patent Office has to draw up a supplementary European search report (which is the case for most applications entering Europe from "overseas"), the applicant will receive a communication shortly after European phase entry providing the applicant, within a time limit of one month, with the option to file amendments. Normally, in such cases, the request for examination is filed upon entry the European phase. After having received the supplementary search report, the applicant receives an invitation to indicate, within a prescribed time limit, to indicate whether he wishes to maintain the already filed request for examination. Within that same time limit, the applicant has to file a reply to the supplementary search report, possibly accompanied with amended claims.

Advice: Inform your agent well ahead of entering the national phase in Europe. Take also into account the option of having issued an SISR by the EPO during the international phase.

In summary

The possibility of filing divisional applications is greatly restricted. It is advised to review pending European patent applications on subject matter that should be part of a divisional.

Searches are more focused and more weight is given to the search opinion that comes with the (supplementary) European or international search report.

Inform your European agent as soon as you know that a filing in Europe is planned.

An International Search Report, an International Preliminary Examination Report or a Supplementary International Search Report issued by the EPO during the international phase should be the trigger for defining a response when entering (or just after entering) the national phase in Europe.

Should you have any further questions, please do not hesitate to contact our patent attorneys.