New EPO Rules

A new amendment to the Implementing Regulation of the European Patent Convention (EPC)²,introducing some new Rules will enter into force on 1 April, 2010. The new Rules will significantly limit options in the prosecution of European patent applications. While these new Rules apply to all European applications, they include provisions specifically applicable to European applications derived out of PCT applications where the EPO was the search and examining authority (i.e. Euro-PCT applications). The new Rules have very important patent strategy consequences that need to be considered early on in patent prosecution. The new Rules, some of their consequences and patent prosecution considerations that follow therefrom are discussed in this newsletter.

The purpose of this newsletter is to provide a deeper analysis of some aspects of the new Rules that are of particular significance to applicants of a European patent application and discuss some of the consequences.

Two of the main aspects of the new Rules will be discussed in this newsletter:

• Time limit for voluntary filing of divisional applications:
  

EPO will introduce a new, non-extendible 24-months time limit for filing divisional applications. This time limit will be calculated from the later to occur of a first Examination Report in a patent family or an objection of lack of unity raised by the EPO.

This 24-month deadline will apply to all divisional applications directly or indirectly derived from the original European applications.

For pending applications, transitional provisions have been set and in accordance with these the period for voluntary filing of divisional applications will expire on 1 October 2010.

The new Rules will in many cases prevent applicants from deferring the filing of divisional applications until the intention to grant a patent has been communicated by the EPO, which is currently the prevailing practice. In light of the new Rule, applicants of European applications will have to consider and plan their strategy for voluntary filing of divisional applications well in advance of the end of the 24-months time limit.

• New short time limits for mandatory response to search reports, particularly applicable to European applications based on a PCT application examined by the EPO (Euro-PCT proceedings):

As of April 1, 2010, a response to an opinion rendered by the EPO during the “international phase” acting in it capacity as an International Search and/or Preliminary Examination Authority (ISA and/or IPEA) will have to be filed within a one-month period from date of issuance of respective communication by the EPO, following filing of a European application based on the Euro-PCT. This rule will apply to all Euro–PCT applications for which the first communication from the EPO will be issued on or after April 1, 2010.

A more detailed discussion follows.

Time Limit for Filing of Divisional Applications

All patent laws stipulate, in one way or another that a patent can be granted on a single invention. This is true also for the European Patent Convention (EPC) that stipulates that in Article 82³. A patent application very often includes claims that the patent office would consider to be directed to more than one invention⁴. An examiner would then raise a non-unity objection calling the applicant to elect the ‘invention’ to be prosecuted in the application and restrict the claims to that invention only. The applicant then has the option to file a divisional application directed to non-elected claims⁵.

In addition to this ‘traditional’ use of divisional applications for protecting non-elected claims, filing of divisional application is often also made with a strategic intent (“strategic use”). For example, a divisional application is often filed as a precaution or back-up for the eventuality that the parent application is opposed, as a fall-back option in case of oral proceedings, keep an application alive so as to be able, when needed, to tailor claims so as to read on a competitor’s product, or as a means to be able to further prosecute a broad claim where the parent application is narrowed to speed its allowance. The new Rules, while having an overall restrictive effect on filing of divisional applications, have a particular negative effect on the ability to use such applications as a strategic tool.

Under the current European Patent Office (EPO) Rules, a divisional application can be filed at any time until acceptance of the application. This has not changed. However, under the new Rules⁶, a non-extendible 24-months time limit will be introduced for filing a divisional application, which will be calculated from the later to occur of a first Examination Report or an objection to unity⁷. In other words, once a first Examination Report is issued in a patent application, all divisional applications derived directly or indirectly from that application⁸ will have to be filed within 24 months of the date of that first Examination Report. In the event that the Examiner later raises a unity objection, the 24-months clock will be reset and a new 2-year time limit will apply.

The 24-months time limit will apply to all applications that are pending on 1 April 2010; even those applications in which examination has already begun before that date. However, in all cases where the 2-year time limit will fall before or soon after 1 April 2010, a 6-month grace period for filing a divisional application will be provided, expiring on 1 October 2010. It is important to note that the 24-months time limit will be applicable to all applications derived out of the parent application where the 24-months clock started ticking. In particular, it will not be possible to file a divisional application out of a divisional application where the 24-month time limit, counted from the date of the first communication from the Examining Division or a non-unity objection in the parent application.

In summary, the following time limits for filing divisional applications to a European application need to be observed, which will be the later to occur of 

• 24 months from the first office action from the Examining Division
• 24 months from an objection of unity
• 1 October 2010⁹

The new Rules pertaining to the filing of divisional applications need also be viewed in the context of other changes. In particular, the Rules specifically state that further processing¹⁰ will not be available to extend these time limits¹¹. Additionally, the new Rules now specifically prescribe that introduction of subject matter that is not within the scope of the invention that was searched and examined is prohibited¹². In sum all this means that non-observance of these time limits for filing divisional applications may mean an irreparable loss of the ability to protect certain subject matter.

The new Rules call for some measures that need to be taken during European prosecution in order to preserve options for patent. The first, obvious, consequences are the need to decide within the prescribed 24-months period on the filing of divisional applications for non-elected claims, namely claims that were removed from prosecution after being considered by the Examining Division as being directed to a separate invention. With the new Rules the decision will need to be usually made sooner than under the existing Rules. The 24-months time period is relatively short and will not permit use of divisional applications with strategic intent to the extent such use was made under the existing rules. Thus, there may often be a rationale to file one or more divisional applications to serve as a ‘place holder’ for potential future use in a manner that will depend on the prosecution circumstances and on other factors.

New short time limits for mandatory response to search reports

Since 2005 the EPO changed its practice relating to search reports, accompanying the search report with a written opinion (WO) on patentability, changing the previous practice of sending initially a search report only¹³ . One of the purposes for this change was to provide applicants with an opportunity to understand, earlier on in the process, what the examination issues are and provoke them to submit a response, amend the claims and/or in parts of the description in the specification, as may be necessary. The practice of accompanying the search report with a WO was introduced both for regular EP applications as well as for PCT applications that are searched by the EPO, in its capacity as the International Search Authority (ISA).

Since its introduction, the response to the WO was discretionary. Experience has shown, however, that most applicants chose not to respond at that stage; but, rather to delay dealing with a substantive response to a later stage. In the case of a regular EP application (“Euro-direct”) such later stage happened when the application was brought up again before the examining division for substantive examination; and in the case of an EP application, stemming out of a PCT application examined by the EPO – long after filing the European application derived therefrom (“Euro-PCT”).

This will all change as of April 1 2010 where a response to the WO will become mandatory within a defined time period. While this will have a general impact; it will particularly affect the manner in which PCT as well as Euro-PCT applications are prosecuted.

According to the standard EPO procedures, within a period of 4-6 weeks from filing of the European application, the EPO sends a communication under Rules 161 and 162 whereby the applicant is given an opportunity to amend the claims and also, where relevant, and is required, where applicable, to pay the excess claim fee¹⁴. This communication sets a non-extendible period of 1-month for response. In the case of a Euro-PCT application this communication draws applicant’s attention to the International Search Report and to the option of amending the application accordingly. Up to now, filing a response has been discretionary.

As of 1 April 2010, a response to said communication will become mandatory; and will apply to any communication received after 1 April 2010. In other words, in practice it may be applicable to any Euro-PCT application filed after mid-February 2010. Communication under Rules 161 and 162 will now require the applicant of a Euro-PCT to respond to the most recent substantive communication which is the WO, where no Request for Preliminary International Examination under Chapter II was filed and the International Preliminary Examination Report (IPER) where such a Request was filed, within said 1-month period. The sanction for non-compliance will be withdrawal of the application (in the language of the Rules “the application will be deemed to be withdrawn”). The first clear consequence is that there will not be much time to consider the last communication received from the EPO, in its capacity as International Search Authority (ISA) or International Preliminary Examination Authority (IPEA) {IPER for an application that has entered into PCT Chapter II, i.e. where an application for International Preliminary Examination was filed; WO for an application that has not entered into PCT Chapter II}. It would be beneficial to have a response to said communication ready and waiting, prior to filing the EP application.

Filing a request for preliminary examination under PCT Chapter II is not obligatory. The main rationale for not filing a request is to defer costs that may be associated with filing such a request and subsequent prosecution that will follow. However, given the fact that applicant will now be faced with the need to substantively deal with the latest communication, upon EP entry, there would appear to be a much stronger rationale to file a request for international preliminary examination and try to do as much as possible to get as close as possible to approval of the claims. The underlying rationale is to advance examination closer to allowance. In case of a positive IPER, the response to the Rule 161/162 communication will be straightforward and there is a good likelihood then for speedy allowance of the EP application.

Given the fact that in view of the new Rules the substantive handling of a European patent application derived from a Euro-PCT applications (i.e. PCT applications that designate the EPO as the search and examination authority) cannot be delayed, serious consideration should be given to proceeding via the route of International Preliminary Examination under PCT Chapter II and utilize the PCT procedure to advance examination, as much as possible, towards a positive IPER. In other cases, it may be of advantage to formulate a response to the substantive communication received in the Euro-PCT application, ahead of filing the EP application.

¹ We have already provided a brief overview of this amendment and highlighted some of the consequences previously in our newsletter of April 2009.
² Decisions of the Administrative Council of 25 March 2009 amending the Implementing Regulations to the European Patent Convention (EPC), CA/D 2/09 and CA/D 3/09.
³ Article 82, “Unity of Invention” states: The European patent application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept.
⁴ This may be the case, for examples, where a patent application claims two different machines achieving the same effect but not having a common inventive feature; or where the patent application concerns two biological molecules with no common chemical structure. A divisional application bears all the dates including filing date and priority date of the parent application. 
⁵ A divisional application is a patent application derived out of a pending patent application (the “parent application”) and claims aspects that are not claimed in the parent application. A divisional application bears all the dates including filing date and priority date of the parent application.
⁶ Amended Rule 36(1)
⁷ As a rule, an issued patent can include claims directed to a single invention only. Where the examiner finds that a patent application contains claims directed to more than one invention, he/she will require applicant to divide the application, i.e. the claims will have to be restricted so as to be directed to a single invention only; and all other claims will have to be deleted. Subsequently, applicant may file one or more divisional applications directed to the deleted claims. The divisional application is entitled to enjoy the same priority and filing date as its parent application, from which it was divided out.
⁸ A divisional application may be derived from a parent application, in which case it is directly derived therefrom; or may also be derived out of a divisional application, in which case it is indirectly derived and is sometimes referred to as a granddaughter divisional application. Note that under the new rules, the 2-year time limit from receipt of a first Office Action in the parent application will also apply to such granddaughter application.
⁹ Within the framework of the 6-months grace provided under the transition provisions for pending applications where the examination has already begun.
¹⁰ Further processing is a procedure permitted under the Rules for extending certain time limits.
¹¹ Amended Rule 135(2)
¹² Amended Rule 137(5)
¹³ The search and subsequent examination were performed in the past by different EPO examiners. This change also followed an EPO internal decision to alter the distribution of work and let the same Examiner perform the search and subsequent examination.
¹⁴ Rule 45 of the Implementing Regulations of the EPC.