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Epc Rule Changes April 2010

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Epc Rule Changes April 2010

  1. 1. -1- Recent Decisions of the Administrative Council Procedural changes at the EPO in April 2010 Ben Muir & James Stones May 2009
  2. 2. -2- Recent decisions of the Administrative Council On 25th March 2009, Administrative Council issued two Decisions to amend the EPC Implementing Regulations: - CA/D 2/09 relating to procedure concerning divisional applications; and - CA/D 3/09 relating to procedure concerning inter alia searching/search reports and voluntary amendment of applications. Both Decisions come into force on 1st April 2010
  3. 3. -3- Part 1 Divisional applications (CA/D 2/09)
  4. 4. -4- CA/D 2/09 - Divisional applications Currently, no limitation on when divisional may be filed, provided parent is pending (R36(1) EPC). After 1st April 2010, ALL divisionals will have to be on file within 24 months from 1st OA on first application (R36(1)(a) EPC) ONE exception - where “new” non-unity issue raised in any subsequent OA (on first or divisional application) then 24 months from that OA to file divisional (R36(1)(b) EPC) - loop hole?
  5. 5. -5- CA/D 2/09 - Divisional applications 24 month periods cannot be extended in any way. CARE - divisionals will still have to be filed while the parent is pending. - if 1st OA is Notice of Allowance (R71(3) EPC), parent is likely to proceed to grant within 24 month period; - divisionals would have to be filed before grant.
  6. 6. -6- CA/D 2/09 - Divisional applications Applicants will no longer be able to: - file divisionals shortly before grant of parent; - file precautionary divisional before attending Hearing in respect of parent; or - file divisional after appealing refusal of parent to replace refused parent, UNLESS grant, Hearing or refusal within 24 month period.
  7. 7. -7- CA/D 2/09 - Divisional applications CA/D 2/09 applies to any divisional filed on or after 1st April 2010. Transitional provisions: - if 24 month period has expired by 1st October 2010, would have until 1st October 2010 to file divisionals.
  8. 8. -8- Part 2 Search Procedures, Voluntary Amendments and Responses to Opinions (CA/D 3/09)
  9. 9. -9- CA/D 3/09 - Search procedure Currently, EPO approach to searching “problematic” subject matter is not uniform: - if EPO considers that independent claims offend R43(2) EPC, still searches ALL independent claims (provided no non-unity issue). - if EPO considers that a meaningful search cannot be carried out, issues Declaration or partial search report. - if EPO considers that there is a lack of unity, issues a partial search report for first claimed invention and invites applicant to pay, within 2-6 weeks, additional search fees for other inventions.
  10. 10. -10- CA/D 3/09 - Search procedure After 1st April 2010, EPO will, in these cases: - invite applicant to “elect”, within 2 months, subject matter to be searched and/or pay additional search fees; - carry out a search regarding elected subject matter only. Claims will have to be restricted during examination to searched subject matter UNLESS ExDiv finds objection unjustified - further search?
  11. 11. -11- CA/D 3/09 - Search procedure 2 month period cannot be extended in any way. If applicant fails to respond then EPO will issue partial search report or Declaration as appropriate. EPO is not providing an opportunity at this stage to comment on whether objection is justified or to amend the claims in respect of objections.
  12. 12. -12- CA/D 3/09 - Search procedure If claims not unified but comply with R43(2) EPC, applicant will have a little more time to pay the additional search fees; If claims offend R43(2) EPC but unified, only some claims will be searched (but at least claims to be searched will be elected by applicant); and If claims offend R43(2) EPC and not unified, applicant will elect which claims are to be searched initially AND will retain opportunity to pay additional search fees.
  13. 13. -13- CA/D 3/09 - Responses to opinions Currently, there is no obligation to respond to opinions attached to search reports. After 1st April 2010, EPO will set a deadline by which the applicant is invited comment upon opinions and, where appropriate, correct any deficiencies and amend the specification. Failure to respond will result in the application being deemed withdrawn (BUT can be rectified with no loss of rights using Further Processing).
  14. 14. -14- CA/D 3/09 - Responses to opinions For non-PCT European applications, response due: - within period set for requesting examination (6 months from publication of the search report - R70(1) EPC) (R70a(1) EPC); or - where examination requested before search report issues, within period set by EPO for confirming applicant’s wish to proceed with examination (usually, 6 months from publication of the search report - E-VIII, 1.2) (R70a(2) EPC).
  15. 15. -15- CA/D 3/09 - Responses to opinions For Euro-PCT applications where EPO was not ISA, response to opinion (issued with supplementary search report) due within 2 month period set for applicant to confirm wish to proceed (R70a(2) EPC). For Euro-PCT applications for which EPO acted as ISA (no Demand) or ISA & IPEA, response to IPRP or IPER due within 1 month from invitation to amend after entry (R161(1) EPC). NOT entirely clear what happens when EPO is ISA but not IPEA (rare) - invitation to amend triggered?
  16. 16. -16- CA/D 3/09 - Voluntary Amendments Currently, applicant has: - an unfettered right to amend voluntarily the specification after receipt of the search report but before receipt of the 1st OA from the ExDiv; and - one opportunity for voluntary amendment as of right after receipt of the 1st OA. Further voluntary amendments are allowable but only at the discretion of the ExDiv.
  17. 17. -17- CA/D 3/09 - Voluntary Amendments After 1st April 2010: - opportunity to make voluntary amendments as of right will be limited to the response to opinions (R137(2) EPC); and - NO further amendments may be made without consent of ExDiv (R137(3) EPC). - applicant will have to identify all amendments and indicate their basis in application as filed. If he fails to do so, ExDiv may request correction of deficiency within 1 month (R137(4) EPC).
  18. 18. -18- CA/D 3/09 - Applications affected CA/D 3/09 applies to: - European patent applications for which the European search report or the supplementary European search report is drawn up on or after 1st April 2010; and - Euro-PCT applications where invitation to amend has not been issued before 1st April 2010.
  19. 19. -19- Part 3 Conclusions
  20. 20. -20- Divisional applications Possible action would include: - reviewing current pending applications over next few months to see if divisionals required; and - if a significant number required, then staggering filing of divisionals before 1st October 2010 to spread costs.
  21. 21. -21- Non-PCT European applications Changes increase importance of pre-filing review of specification: - check claims for unity/clarity/compliance with R43(2) (to avoid any unnecessary elections or additional search fees); - minimise number of claims (to avoid any unnecessary excess claims fees); and - minimise number of pages (to avoid any unnecessary excess pages fees).
  22. 22. -22- Non-PCT European applications If invitation issued by SearchDiv prior to search: - elect subject matter to be searched and/or pay additional search fees (2 months) After receipt of extended search report: - file response to search opinion (6 months from publication of search report) After receipt of examination report: - file divisionals (24 months)
  23. 23. -23- EPO or USPTO as ISA? Where PCT is filed claiming priority from a preliminary US patent application, EPO or USPTO as ISA? EPO? - additional search results before NatPhase and expedited grant of Euro-PCT BUT early response to search opinion required (within ~3 months from entry). USPTO? - delay commenting on search results and amending Euro-PCT for up to ~12 months from entry BUT no additional search results before NatPhase and grant of Euro-PCT may be delayed.
  24. 24. -24- Euro-PCT Applications If EPO was not ISA, then no real change to current practice, viz. after entry: - EPO will invite applicant to amend specification and to pay excess claims fees in respect of amended claims; - EPO will produce supplementary search report (with opinion) on basis of amended claims; and - applicant will then have 2 months to (i) confirm wish to proceed with examination, and (ii) file response to opinion, including any voluntary amendments.
  25. 25. -25- Euro-PCT Applications If EPO was ISA (no Demand) or ISA & IPEA, then response to EPO opinion from International phase will need to be filed very soon after entry, e.g. within ~3 months. We would recommend providing instructions to respond to opinion at the same time as instructions to enter EP regional phase or to take over Euro-PCT case.
  26. 26. -26- Euro-PCT Applications If EPO was ISA but not IPEA, then we would recommend: - revising claims of Euro-PCT on entry (to avoid paying unnecessary excess claims fees if not given opportunity to revise claims); - at least until clear that EPO intends to treat such Euro-PCTs in same manner as other Euro-PCTs where EPO acted as ISA.
  27. 27. -27- Points to take home As of 1st April 2010: - 24 months from 1st OA to file divisionals; - if invited, elect subject matter for searching; - response to EPO search opinions will be required (deadlines depend on type of application); and - fewer opportunities to amend voluntarily as of right.
  28. 28. -28- Overview of Recent Changes 2008/2009 - changes designed to limit size of EPAs. - “two tier” excess claims fees; and - excess pages fees payable on filing. 2010 - changes designed to “streamline” prosecution. - limited opportunity to file divisionals; - mandatory response to search opinions; and - limited opportunity to amend voluntarily as of right.
  29. 29. -29- Any questions?

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