Further rule changes announced by the European Patent Office
The European Patent Office (EPO) has announced a further set of rule changes to come into force in 2010 and 2011. These are in addition to the rule changes we recently reported designed to streamline the prosecution of patent applications in Europe (for further information, please click here). The new rule changes essentially relate to four distinct areas.
Prior art disclosure
Where a European patent application claims priority from an earlier application, an obligation to provide the EPO with the results of any search carried out on that earlier application is being introduced for applications filed on or after 1 January 2011. These results should be provided on filing the European application, or on entry to the European regional phase, whichever is appropriate. Failure to file the search results may result in a communication from the EPO setting a two month time limit to comply with this requirement or identify reasons for not doing so. If no response is filed to the communication, the application will be deemed withdrawn.
The Supplementary International Search Report
Recent changes to the patent cooperation treaty (PCT) have provided for applicants to receive a supplementary international search report (SISR) in addition to the international search report (ISR) issued by the international searching authority (ISA). The SISR is carried out by an alternative body to the ISA and allows applicants to obtain a greater degree of certainty that relevant prior art has been identified before entering the national or regional phase.
At present, only the Russian, Swedish and Nordic patent offices offer to carry out SISRs. The EPO has indicated that it intends to join this group in 2010. As such, some of the announced rule changes clarify the mechanisms by which an SISR will interface with the European Patent Convention.In particular, the fee for obtaining the SISR from the EPO has been set at €1785. Moreover, the new rules make it clear that the applicant will have to respond to comments made in any SISR issued by the EPO shortly after entry to the regional phase in Europe, before the issuance of a substantive examination report. Failure to respond to the comments will result in the application being deemed to have been withdrawn.
The EPOs decision to offer SISRs may be of interest to applicants abroad who will have the option of having their international applications searched both by their local ISA and the EPO during the international phase, thereby obtaining a greater degree of confidence of the likely outcome of the application before entering the national/regional phase.
Fees
A general increase of around 5% will apply to fees before the European Patent Office as of 1 April 2010. The increased fees will apply to all fees paid after this date so we suggest payment of outstanding fees before this date if possible.
For those cases where divisional applications are required to meet the new filing deadlines, consideration should be given to filing the divisional applications before 1 April 2010 to benefit from the current fees.The fee increases will also affect International applications for which the European Patent Office is the International Searching Authority and costs savings could be made by filing new applications before the introduction of the new fee structure.
Refund of Examination Fee
The criteria whereby a refund of the examination fee is available have also been amended.
Once the Examining Division has assumed responsibility for the application, a 75% refund of the examination fee is available if the application is deemed to be withdrawn through failure to reply to a negative opinion accompanying the European search report, the supplementary European search report, or the written opinion issued by the European Patent Office in its capacity as the International Searching Authority. A 75% refund will also be available if the application is withdrawn within a period of seven months of the mention of the publication of the European search report or, in the case of applications derived from an International application, seven months of the invitation to proceed further with the application.
In those instances where the application is withdrawn by the Applicant, a refund is not available if substantive examination has already commenced. It is, however possible to make the withdrawal of the application conditional on obtaining a refund of the examination fee.Again, a 75% refund is available if the Examining Division has assumed responsibility but substantive examination has not started.
If you have any questions regarding the proposed rule changes and how they may affect your current or future applications, please contact your usual attorney at Thompson Gray.
To view the decisions of the Administrative council of the European Patent Office making these rule changes, please click here.
15 March 2010