European Patent Office introduces new rules regarding prosecution procedure
The European Patent Office (EPO) has announced a series of rule changes intended to streamline the prosecution of European patent applications. In particular, these rules bring forward the stage at which applicants must respond to substantive objections raised by the EPO.
After changes in procedure in recent years, international and European patent applications are provided with a written opinion regarding patentability before the first examination report is issued by the EPO. As a result, the first examination report often simply refers back to such an existing written opinion. It is felt that this can result in unnecessary delay and the new rules are intended to address this.
In the case of international applications entering the European regional phase for which the EPO drew up the International Preliminary Report on Patentability (IPRP), the official communication issued under the EPO’s current practice shortly after regional phase entry inviting the applicant to file voluntary amendments to the application within a one month period will additionally require the applicant to respond to objections raised in the IPRP within the same time one month period. This new rule will apply to all international patent applications entering the European regional phase for which the official communication issued under the EPO’s current practice has not issued on 1 April 2010.
If the EPO did not draw up the IPRP, a supplementary search report (including a written opinion) will be issued followed by an official communication setting a one month period within which the applicant must respond to the written opinion. This official communication will take the form of an addition to the official communication issued at that stage under the EPO’s current practice inviting the applicant to confirm whether or not the application should proceed to substantive examination. This new rule will apply to applications for which the supplementary search report is drawn up after 1 April 2010.
In either case, failure to meet the deadline for response will result in the application being deemed withdrawn, although the EPO’s further processing procedure for late response on payment of a fee is available.
For applications filed directly with the EPO (i.e. those applications not derived from an International application), the EPO’s current practice of issuing an extended search report (including a written opinion) will continue. However, the applicant will now be required to comply with or comment on any objections at the time of requesting examination, which must be done within six months of publication of the search report, rather than waiting for the first examination report. Again, failure to respond in the prescribed period will result in the application being deemed withdrawn, although the applicant may rely on the EPO’s further processing procedure, and the new rule will apply to applications for which the extended search report is drawn up after 1 April 2010.
The procedure adopted by the EPO in conducting both standard and supplementary search reports is also to be changed, with the new rules applying search report is drawn up after 1 April 2010.
Firstly, a search report will only be drawn up on more than one independent claim in a given category if the subject matter of the application includes one or more of the following: a) a plurality of uses of interrelated products; b) different uses of a product or apparatus; or c) alternative solutions to a particular problem, where it is inappropriate to cover these alternatives by a single claim. If the EPO finds these circumstances not to be met it will give the applicant a period of two months to select the independent claims to be searched. The further processing procedure is not available in this instance and, in the absence of a response, the search will be carried out on the basis of the first claim in each category. Examination will only proceed on the basis of subject matter that has been searched unless the original objection can be shown not to have been justified.
Secondly, in the event that the EPO considers that it cannot carry out a meaningful search on the basis of some or all of the claimed subject matter, a communication will issue inviting the applicant, within a period of two months, to indicate which subject-matter is to be searched. This might occur, for example, if the EPO considers the application to include claims that are speculative in view of the disclosure provided by the application or that relate to unpatentable subject matter, such as a business method. Again, the further processing procedure is not available. If the applicant does not respond in due time or does not overcome the deficiency, the EPO will issue a reasoned declaration indicating that a meaningful search cannot be carried out or, as far as is practicable, draw up a partial search report. If a partial search report is drawn up, the EPO will require that the claims are restricted to the searched subject matter during substantive examination unless the Examining Division considers the objection raised during the search procedure to have been unjustified.
If you have any questions as to how these rule changes will affect your current or future patent applications, please contact your usual Thompson Gray attorney.
20 April 2009