EPO – Important amendments to the procedural provisions of the EPC enter into force on April 1, 2010

Posted: March 23rd, 2010

EPO In March 2009, the Administrative Council of the EPO amended the Implementing Regulations to the European Patent Convention (EPC). The amended Rules enter into force on April 1, 2010 and are part of the “raising the bar initiative” of the EPO. Reported by Rudolf Teschemacher, Bardehle & Pagenberg.

Divisional applications
The first group of amendments concerns the filing of divisional applications. In amended Rule 36 EPC strict time limits for filing divisional applications are provided for. Representatives of the interested circles have voiced strong criticism since, under the new regime, the applicant has no guarantee that he knows what he can expect to be granted in a pending application when the time limits for filing a divisional application lapse. In addition, the provision on entering into force implies a retrospective effect since the decisive criterion for the application of the new law is the filing of the divisional application. Thus, the respective time limits started to run long before April 1, 2010. As a transitional regime, it is provided that such time limits continue to run for not less than six months. Thus, at the end of September 2010 a wave of divisional applications is expected.

Continue reading on filing of divisional applications:

The new regime under Rule 36 EPC as amended will be the following:
The distinction between an obligatory division caused by an objection to non-unity and a voluntary division made on the applicant’s own volition, a distinction deleted from Rule 25 EPC 1973 as early as 1988 because it had created difficulties, is re-introduced into the EPC. In case of a non-unity objection, the applicant has to file a divisional application within 24 months, the time limit running from the communication raising the objection. A voluntary divisional application may also be filed within 24 months, the time limit running from the first communication of the Examining Division. In case of a sequence of divisional applications, it is the first communication in the first parent application triggering the time limit for all successive divisional applications.

In future, a cautious applicant will have to take into account that the outcome of grant proceedings may be less than he expects and may be less than he thinks is justified. If grant proceedings have not come to an end before the lapse of two years after the first communication, he has to file a divisional application in order to keep his options open. Only in case of an objection to non-unity, a divisional application may be filed later. This will entail an increase in divisional applications filed as precautionary measure, in particular if the backlog in examination and consequently pendency times continue to increase.

The EPO has published a notice concerning these amendments in its Official Journal.

Search and examination interface

The second group of amendments concerns the interface between search and examination. Originally, search and examination were conceived as separate stages of the procedure performed by different units of the EPO. The EPO’s BEST-project (Bringing Examination and Search Together) abandoned this separation for the internal operation of the EPO and today all examiners undertake search as well as substantive examination and the search examiner normally is the first examiner of the Examining Division. The amended Rules aim at also abandoning the separation of search and examination in relation to the applicant. The applicant has to react on certain actions of the search examiner. In particular, he has to reply to objections raised in the search opinion. This does not fit very well in the unchanged structure of the Convention according to which the search result is the basis for the applicant’s decision whether or not to proceed with the application and to request substantive examination. It may be expected that the question will be raised before the Boards of Appeal whether or not there is a conflict between the amended Rules and the Convention itself.

Details of the changes re search and examination interface

1.    Number of independent claims at the search stage

Rule 43 (2) EPC restricts the number of independent claims in the same category to one unless specific requirements are fulfilled. New Rule 62a EPC gives effect to this provision at the search stage. If the search examiner considers that there are too many independent claims he shall invite the applicant to indicate within 2 months the allowable number of claims on the basis of which the search is to be carried out. In the absence of a reply, the search is carried out on the basis of the first claim in each category.

2.    Statement of the applicant before incomplete search

In accordance with Rule 63 (1) EPC, the EPO may draw up a partial search report or give a declaration of no search if it considers that the application is defective to such an extent, e.g. in respect of clarity, conciseness or support, that it is impossible to carry out a meaningful search on the basis of all or some of the subject-matter claimed. Rule 63 (1) EPC as amended introduces a possibility for the applicant to file within 2 months a statement indicating the subject-matter to be searched. The statement may refer to a particular embodiment of the description or introduce an improved version of the claim, although amendments are not yet allowable at the search stage.

3.    Obligatory reply to search opinion

New Rule 70a EPC requires for direct European patent applications that the applicant has to reply within 6 months after publication of the European search report to the opinion accompanying the search report if the opinion raises objections and contains an invitation to remedy any deficiencies. Corresponding provisions apply to Euro-PCT applications having entered the regional phase.

4.    Amendments

So far, the applicant was allowed, in accordance with Rule 137 (3) EPC to make amendments of his own volition after receipt of the first communication of the Examining Division. Under Rule 137 (2) EPC as amended, this right is restricted to replies to the search opinion. Any further amendment is subject to the consent of the Examining Division.

Amended Rule 137 (4) provides that the applicant when filing amendments shall identify them and indicate the basis for them in the application as filed.

Rule 137 (4) EPC, providing that amended claims may not relate to unsearched subject matter which is considered lacking unity with the original claimed subject-matter (so called shifting), has been moved to new Rule 137 (5) EPC which also excludes amendments relating to subject-matter not searched in accordance with Rule 62a or Rule 63 EPC.  The combined effect of new Rule 137 (5) EPC and the new time limits for filing divisional applications may have as a consequence that subject-matter disclosed in the application gets irrevocably lost without a chance to have it examined in substance.

The EPO has published a notice concerning these amendments in its Official Journal.

Users of the European patent system will not take comfort in the fact that the fees of the EPO have been raised by some 5 Percent, also with effect from April 1, 2010.

See the new schedule of fees here.


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