IP-Fälle und Artikel

Shaking things up: EPO changes of procedure

There has been a fair amount of procedural change at the European Patent Office (EPO) recently.

As a guide for applicants, here we summarise ten of these changes:

1. Druckexemplar (text intended for grant) produced electronically

From 01 April 2014.

2. Handwritten amendments and corrections abolished

From 01 January 2014, replacement documents of the application must be typed or printed. Any handwritten amendments/corrections filed will be treated as a formal deficiency and the applicant will be invited to file a typed or printed version.

3. Prior art sequence listings

From 01 January 2014, prior art sequence listing can be referenced by the accession number and the version or release number in a publicly available database. The actual sequence is not required.

4. No correction of the patent

By the decision of G 1/10 of 23 July 2012, it is not permissible to correct the text of a patent (claims, description and drawings) under Rule 140 EPC. It is still usually possible to correct the bibliographic details of the patent.

5. Divisional application time limit removed

From 01 April 2014, there is no time limit for filing voluntary divisional applications. There is also an additional fee for second and subsequent generation divisionals.

6. Start of search or examination

From 28 June 2013, the start of search or examination is indicated on the European patents register.

7. Translation of priority application

From 01 April 2013, failure to file a translation of a claimed priority application on invitation from EPO results in loss of the priority right.

8. Non-unity prosecution

From 01 November 2014, both Euro-direct and Euro-PCT applicants, irrespective of the International Search Authority, can request a European search report on any invention claimed. Applicants can also then choose any searched invention as the basis for further prosecution.

9. Laptops in oral proceedings

Laptops and other electronic devices are now allowed to be used during oral proceedings as long as they are not used to record sound or cause any disturbance.

10. Summons to oral proceedings

A summons to oral proceedings will in general be issued between four to five months before the date of the oral proceedings, unless a shorter time is agreed with the applicant beforehand.

If you have any questions about these changes, please contact your usual D Young & Co attorney.