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IP Cases & Commentary – Details

01 June 2009

EPO Introduces Changes to Increase “Quality” of Patents Granted

Jonathan Jackson

From our previous bulletins, you will be aware that the European Patent Office (EPO) is introducing a time limit for filing divisional applications. In addition, the EPO has also recently announced a number of other changes of which you should be aware. These changes have been introduced by the EPO to increase the “quality” of the Patents that are granted.

Applications containing a plurality of independent claims in one category - Introduction of new Rule 62a EPC

As you know, a European patent application having more than one independent claim in any one category (where these independent claims cover similar subject matter) will not be allowed. This is because the EPO considers the claims to contravene Rule 43(2) EPC as not being concise.

However, for search reports issued on or after 1 April 2010, where the EPO considers the claims to contravene Rule 43(2) EPC, the EPO will ask the Applicant which independent claim he or she wishes to pursue. There will be a time limit set. If the Applicant does not respond within the time limit, the EPO will only search the first mentioned independent claim in one category. This time limit is excluded from further processing.

During substantive examination, it will be possible to argue that such a restriction was not applicable. However, given that the Search Examiner and the Substantive Examiner is typically the same person at the EPO, unless the arguments are very convincing, they are unlikely to be successful. This means that the Applicant will be required to restrict the claims to only those searched.

This change means that it is typically not advisable to file European patent applications having more than one independent claim in any category where these independent claims cover similar subject matter (unless they relate to one of the possibilities permitted under Rule 43(2) EPC). This is for two reasons. Firstly, there will be an additional Office Action issued, which may reduce the efficiency of the prosecution. Secondly, with excess claims fees being so high, the Applicant could waste a large amount of money in paying claims fees for claims that will need to be excised during prosecution.

Response to the extended search report - Introduction of new Rule 70a EPC

The EPO issues an opinion with the extended 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.

However, for extended European search reports issued on or after 1 April 2010, the EPO will make it compulsory to “respond” to such an opinion. Failure to respond in time will mean that the application is deemed withdrawn. The time limit for response depends on whether the Applicant has already paid the fee for substantive examination prior to the issuance of the search report. If substantive examination has not been requested prior to issuance of the search report, the response must be filed by the expiration of the time limit for requesting substantive examination. If substantive examination has been requested prior to the issuance of the search report, the response must be filed within the period specified for indicating whether the Applicant wishes to proceed further with the application. These periods are subject to further processing, should you need more time to respond.

It is not clear at present to what extent the Applicant must “respond” to the opinion. Recent discussions with the EPO seem to suggest that it is not sufficient to simply say “I do not agree with the Examiner”. Instead the EPO expects Applicants to react to the objections raised in the opinion by making appropriate amendments or well-founded comments. The EPO will update the Guidelines for Examination shortly where the degree to which Applicants must “respond” will be made clear.

Amendment of the European Patent Application - Amendment to Rule 137 and Rule 161 EPC

The EPO always requests basis for any amendments made to the European patent application. However, current Rule 137 EPC is being amended to make this mandatory on applications which have an extended European 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.

The EPO has always had a very strict interpretation of added matter. However, this change seems to indicate that the Examiners will become more inclined to not look for any basis themselves, and will simply revert to the Applicant to provide such basis.

For European patent applications which are derived from PCT applications, the EPO allows the European patent application to be amended once in 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.

However, for applications having a letter under Rule 161 EPC issued on or after 1 April 2010, this procedure changes. Where the EPO acts as the International Search Authority (ISR) and, where appropriate, the International Preliminary Examining Authority (IPEA) on the PCT application from which the European patent application is derived, the EPO will ask the Applicant to refer to the written opinion contained in the ISA or IPEA for details of the current objections and invite the Applicant to “respond” to the written opinion. Unlike now, the Applicant must respond to this invitation otherwise the application will be deemed to be withdrawn. Like the introduction of Rule 70a EPC, it is not clear to what extent the EPO requires an Applicant to “respond”.

Again, this change seems to be forcing Applicants to deal with objections earlier in the prosecution cycle. However, as Applicants only get one month to respond to the Rule 161 EPC letter, it is important that Applicants look at the written opinion early, and preferably not wait for the Rule 161 EPC letter.

One other point to note is that in the change to Rule 137 EPC, the EPO has removed the opportunity for the Applicant to amend the application as of right in response to the “first communication” referred to in the previous Rule 137(3) EPC. After the Applicant has amended the application by “responding” to the written opinion in accordance with either new Rule 70a EPC or amended Rule 161 EPC, any other amendments are at the discretion of the Examining Division. This is of concern. In the future, if the EPO want Applicants to look at, and address, objections earlier during prosecution, Examiners may start to exercise discretion and not admit amendments (other than those as of right) into proceedings. Although it is currently unusual for Examiners to exercise their discretion, it is to be expected that this will become more common.

Comment

These changes will undoubtedly increase the speed at which the prosecution of European patent applications is concluded. However, it has to be questioned whether streamlining the prosecution procedure will automatically increase the “quality” of the patents issued by the EPO.

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