The EPO has announced a number of new rules which will enter into force on 1 April 2010. A summary of the most significant changes that will impact European practice is outlined below.
(i) Compulsory response to the Extended European Search Report (EESR) - introduction of new Rule 70a EPC
At present, the Applicant may or may not respond to the EESR. For ESSRs issued on or after 1 April 2010, the EPO will make it compulsory to respond. Failure to respond in time will mean that the application will be deemed to be withdrawn.
Applicants have six months within which to respond. Further Processing is available as a remedy.
(ii) Amendment of the European patent application - changes to Rule 161 EPC
For Euro-PCT applications, the EPO allows the European patent application to be voluntarily amended once soon after filing.
This procedure will change on applications for which no communication has been issued under Rule 161 EPC before 1 April 2010. Where the EPO acts as the International Search Authority (ISR) or the International Preliminary Examining Authority (IPEA) on the PCT application, the EPO will ask the Applicant to comment on a negative Written Opinion. Unlike now, the Applicant must respond to this invitation otherwise the application will be deemed to be withdrawn. The response term is only one month. Further Processing is available as a remedy.
Amendments or comments on the Written Opinion filed on entry into the European phase are deemed to be a relevant response, as are amendments filed under Article 19 PCT which are maintained on entry into the European regional phase.
If a reply to a Written Opinion is made during the international phase, and a negative International Preliminary Examination Report (IPER) is issued, the response filed should address the issues raised in the IPER.
This change forces Applicants to deal with objections raised in the International phase much earlier. Since only a one month term for response is provided, it is important that Applicants now look at and formulate a response to the Written Opinion much earlier.
(iii) Amendment of the European patent application - changes to Rule 137 EPC
The EPO usually requests basis for any amendments made to the European patent application.
Rule 137 EPC is being amended to make this compulsory on applications which have a search report issued on or after 1 April 2010. If this information is not provided in enough detail for the Examining Division, a time limit of one month will be provided to provide this information. Further Processing is available as a remedy.
(iv) Plurality of independent claims in one category not allowed - introduction of new Rule 62a EPC
A European patent application having more than one independent claim per category is not allowed.1 This is because the EPO considers that the claims are not concise.
For search reports issued on or after 1 April 2010, where the EPO considers that the claims are not concise, the Applicant will be asked to indicate which independent claim is to be pursued. There will be a two month time limit set. This time limit is excluded from Further Processing. If the Applicant does not respond within the time limit, the EPO will only search the first mentioned independent claim in each category.