Recent European Patent Convention (EPC) rule changes were recently passed to streamline European patent prosecution. Summaries of various important aspects of these rule changes are discussed below, including how these changes may affect European patent prosecution strategy.
Under the amended rules, applicants have six months to respond to a Rule 161 or Rule 162 communication, where the previous term was a single month. This change primarily affects clients who wish to expedite prosecution, as an applicant can only obtain accelerated prosecution by waiving the right to Rule 161 and Rule 162 communication. To qualify for accelerated prosecution, upon European regional phase entry an applicant must pay all claim fees and file a response to the Written Opinion/International Preliminary Report on Examination. Otherwise, the European Patent Office (EPO) will determine the requirements are fulfilled and then, after the six month deadline has passed, will forward the application to the Search Division for a supplemental search (where the EPO is not the International Searching Authority) or to the Examining Division (where the EPO is the International Searching Authority). This process slows down prosecution, regardless of when the response Rule 161/162 response is filed.
Where the EPO is the International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA), Rule 161(1) governs amendment of the application. Within six months of the Rule 161 communication, the applicant must respond to a negative Written Opinion or International Preliminary Examination Report and pay excess claim fees, and the applicant may voluntarily amend the claims. Where a jurisdiction other than the EPO is the ISA, Rule 161(2) governs, and the applicant must pay excess claim fees within 6 months of the Rule 161 communication but need not comment on the Written Opinion or International Preliminary Examination Report. Because excess claim fees are paid at this stage, applicants may choose at this time to reduce the number of claims, prioritize claims, and remove non-patentable subject matter.
According to Rule 36(1)a, a voluntary divisional application must be filed by the earlier of: twenty-four months from issuance of a first communication from the Examining Division or the date of grant or refusal of the parent application, i.e. the parent must be pending. According to Rule 36(1)b, a mandatory divisional application must be filed by the earlier of twenty-four months from issuance of a first communication from the Examining Division raising specific unity objection for the first time, or the date of grant or refusal of the parent application, i.e. the parent must be pending. Thus, decisions regarding the filing of divisional applications may need to occur earlier than under the previous rules.
According to Rule 62a, a European patent should only contain one independent claim in the same category, with the exception where the claims relate to either (1) a plurality of interrelated products, (2) different uses of a product or apparatus, or (3) alternative solutions to a problem, where it is inappropriate to cover the alternatives in a single claim. Prior to the search, the applicant is asked to indicate independent claims to be searched, and only searched subject matter will be examined. The EPO will only search the first listed independent claim in any given category, there is no opportunity for the payment of additional search fees, and unsearched subject matter must be deleted.
According to Rule 63, claims deemed to lack clarity are excluded from searching and patentability. Prior to search, the applicant is asked to file a statement indicating subject matter to be searched. Only searched subject matter is examined. Therefore, if the applicant fails to respond, then no search will be conducted. Alternatively, if the applicant’s response does not address the problem, no search will be conducted. Applicants and practitioners should ensure that claims are clear, should remove unpatentable subject matter from the claims, and must always respond to a Rule 63 EPC communication is search and examination of the claims is desired.
Where the U.S. Patent and Trademark Office is the ISA or when the application is a directly filed European application, the applicant must file a response to the Extended European Search Report. If the applicant does not respond within the six months deadline, then the application is deemed withdrawn.