10 November 2010

EPO Extends Period for Filing Amended Claims and Arguments After European Regional Phase Entry

EPO Extends Period for Filing Amended Claims and Arguments After European Regional Phase Entry

Shortly after entry into the European regional phase of a PCT application, the EPO issues a communication under Rules 161 and 162 EPC. Within the period set in this communication, the applicant may file amended claims and pay any additional claims fees accordingly. The amended claims filed within this period will form the basis for any supplementary search to be carried out by the EPO. If the EPO has already carried out a search and issued a patentability opinion during the international phase, the EPO may require the applicant to file a compulsory reasoned response to the opinion within the period set in the communication.

The EPO rules previously set a period for response of only one month to the communication under Rules 161 and 162 EPC. The relevant rules have now been amended to extend the period for response to six months. This change will apply to communications under Rules 161 and 162 issued from 1 May 2011. In the meantime the shorter response period of one month continues to apply.

It is anticipated that this change will assist applicants by allowing more time to formulate appropriate claims and a response strategy after European regional phase entry. However substantive examination of Euro-PCT applications will now start later than was previously the case. If accelerated examination is desired it is recommended to explicitly request this on European regional phase entry.