英文 |  日文 |  各地分所 |  联系我们 |  网站说明 |  首页 
新闻档案
CHANGES TO THE EUROPEAN PATENT CONVENTION IMPLEMEN

by Francesca Giovannini

As of April 1st, 2010, significant changes are going to be applied to the EPC implementing regulations, which will likely affect the practice in filing and prosecuting European patent applications (see Administrative Council Decisions CA/D 2/09 and 3/09). These changes have been introduced by the EPO to increase the "quality" of the patents that are granted.

1. Divisional Applications

1.1 According to amended Rule 36 EPC, the EPO will introduce a cut-off date for the filing of divisional applications.

1.2 Currently, a divisional application can be filed from any pending European patent application, meaning that any divisional application must be filed before the "parent" application is granted, refused, or withdrawn.

1.3 When the amended rule enters into force, a divisional application will need to be filed:
- within 24 months from the first examination report issued on the earlier application ("voluntary" divisional); or
- within 24 months from a non-unity objection under Art.82 EPC raised for the first time in an examination report ("mandatory" divisional).

1.4 It is important to note that the 24-month time limit for filing divisional applications starts from the first communication from the Examining Division on the earliest related application.

Therefore, in the case of a series of divisional applications, where later divisional applications are divided from earlier divisional applications, all divisional applications must still be filed within 24 months from the first communication on the original parent case.

1.5 These time limits will not be extendable and "further processing" under Art.121 EPC will be ruled out. Thus, if a time limit is missed, the only remedy will be a request for reestablishment of rights under Art.122 EPC.

1.6 In addition to these new time limits, the previous requirement that the parent application must be pending at the time of filing the divisional application still stands. So any divisional application must be filed before the parent application is granted, refused or withdrawn, even if this is less than the 24 months from the first communication from the Examining Division on the parent.

1.7 This new provision will apply to the filing of divisional applications on or after 1 April 2010.
According to the transitional provisions, if a Rule 36 time limit expires before April 1st, 2010, a divisional application may still be filed within six months, i.e. up to October 1st, 2010, while if a Rule 36 time limit is running on April 1st 2010, it will continue to do so for not less than six months.


2. Plurality of Independent Claims, and Clarity and Conciseness of the Claims

2.1 Applicants will be invited to comply at the search stage with the requirements of clarity and conciseness of the claims (Article 84 and Rule 43(2) EPC), and in particular:
- the EPO search will be focused on only one independent claim per category; and
- in the case of "complex applications", applicants will be invited to clarify the subject-matter to be searched.

2.2 As concerns multiple independent claims, Rule 43(2) EPC provides, with few exceptions, that a European patent application may not contain more than one independent claim in the same category (product, process, apparatus or use). Currently, compliance with these requirements is examined only at the substantive examination stage.

2.3 According to new Rule 62a EPC, in cases where Rule 43(2) EPC is not complied with, the EPO will invite the applicant to elect, within a 2-month period set in the search stage, one independent claim per category on which the search is to be carried out.

In the absence of a timely reply, only the first independent claim in each category will be searched. Substantive examination will then be carried out only on the searched subject-matter; any unsearched claims will need to be deleted, possibly to be pursued by filing a divisional application.

2.4 Applicants should adopt the practice of drafting a minimum number of independent claims for European patent applications, or amending the claims accordingly when entering the EP phase of a PCT application.

2.5 According to amended Rule 63 EPC, in the case of "complex applications", that are applications lacking support, clarity or conciseness to such an extent that no meaningful search of the prior art is possible, applicants will be invited within a 2-month period set in the search stage to submit a statement clarifying the subject-matter to be searched, e.g. by indicating specific embodiments which may be used to interpret the claims or by supplying improved claim wording.

2.6 If the applicant does not submit a timely statement, or if such statement is not considered sufficient to overcome the deficiencies, the search examiner will issue a reasoned declaration that a search is not possible, or a partial search report. At the Examination stage, the applicant will be invited to restrict the claims to the searched subject-matter.

2.7 These new provisions will apply to European patent applications for which the European search report or the supplementary European search report is drawn up on or after April 1st, 2010.


3. Response to the Extended European Search Report

3.1 The EPO issues an opinion with the European search report which sets out any objections the examiner has to the application. At the moment, the Applicant may respond to this opinion including, where appropriate, the filing of amendments.

3.2 According to new Rule 70a EPC, if the opinion points out any deficiencies, an invitation to correct them will be issued: in this case, Applicants will now be required to submit a response to the invitation within the period for filing the request for examination, i.e. up to 6 months after the publication of the European search report.

3.3 A response will also be mandatory in case of a negative opinion accompanying a supplementary European search report drawn up in a Euro-PCT application, and the response will have to be filed within the period for indicating the applicant's intention to proceed further with the application.

3.4 If these deadlines are missed, "further processing" under Art.121 EPC will be available.

3.5 The new rule will apply to European patent applications for which the extended European search report or the European supplementary search report is drawn up on or after April 1st, 2010.


4. Response to the PCT Report for Applications where EPO acted as ISA or IPEA

4.1 For European patent applications which are derived from PCT applications (i.e., Euro-PCT applications), the EPO allows the European patent application to be amended once in a response to a letter from the EPO issued under Rule 161 EPC. This letter is issued soon after filing of the European application. Presently, the Applicant may or may not respond to this letter.

4.2 According to amended Rule 161 EPC, Applicants will now be invited to reply to possible objections raised in Written Opinions or International Preliminary Reports on Patentability issued by the EPO in Euro-PCT applications. This reply will have to be filed within a 1-month period, triggered by the letter from the EPO under Rule 161 EPC.

4.3 Failure to respond will result in the deemed withdrawal of the application, but "further processing" under Art.121 EPC will be available.

4.4 The new rule will apply to Euro-PCT applications where a communication under current Rule 161 is issued on or after April 1st, 2010.
 

◎2011 Osha Liang LLP |  休斯顿  |   巴黎  |   奥斯汀   |   华盛顿  |   东京  |   杭州