INNsight article from Venner Shipley

"The EPO has adopted a strategy which seeks, among other things, to grant fewer but better patents.  At its heart, the strategy involves tightening procedural rules, either by enforcing existing rules more strictly or by introducing new rules and fee structures, and tackling procedural abuses."

Important changes have been made to the Implementing Regulations to the European Patent Convention (EPC) which will come into effect on 1 April 2010. 

The changes include the introduction of stricter time limits as to when divisional applications can be filed as well as new rules which will require applicants to play an active role earlier in the application process.

The changes will significantly affect not only how existing applications should be handled, but also how specifications should be prepared for future applications. 

Even though the rule changes will not come into force for some time, applicants may want to start taking action now for instance by reviewing their portfolio of patent applications, identifying what they want to protect, checking whether they will need – or expect to need – to file divisional applications and prepare a filing programme to ensure that an adequate number of divisional applications are filed in time. 

Applicants are also strongly urged to invest more resources into pre-filing activities, such as searching, screening invention reports and preparing specifications, so that future applications are suitably focussed.  Applicants should also ensure that they have sufficient resources to respond quickly and effectively to official communications issued by the European Patent Office during the first few years of an application.  Decisions taken during these early years are critical as they will determine the usefulness of any patent ultimately granted, not least because the options for undoing or remedying unnecessary amendments will be severely curtailed.

Background – Why are the rule changes needed?

To understand the effect that the rule changes will have, it is helpful to look at why the EPO considers the rule changes are needed in the first place.

The European Patent Office (EPO) has an ever-increasing workload.  For example, the number of patent applications filed annually has more than doubled between 1995 and 2008.  Also, the EPO currently has a backlog of nearly 400,000 unprocessed cases. Furthermore, the EPO is faced with an increasing number of applications in areas of technology, such as computer software, pharmaceuticals and biotechnology, in which the law is changing or is at odds with the law in jurisdictions outside of Europe.

The EPO has adopted a strategy which seeks, among other things, to grant fewer but better patents.  At its heart, the strategy involves tightening procedural rules, either by enforcing existing rules more strictly or by introducing new rules and fee structures, and tackling procedural abuses.

One procedure which the EPO perceives is being regularly abused is the filing of divisional applications.  As well as using divisional applications in the conventional way (namely to protect inventions not having unity of invention with the first invention claimed in an application) many have used divisional applications to replace applications that were withdrawn or refused at a late stage in examination proceedings, thus extending the examination procedure.  This type of use – which can be compared to the use of continuation applications in the US – is considered by some at the EPO to be unfairly detrimental to third parties.

Another practice of which the EPO disapproves is the filing of applications with large numbers of claims or with claims of overlapping scope.

Thus, the rule changes seek to complement other recent changes, such as increased claims fees, to encourage applicants to file applications having fewer claims that are directed to only one invention and which, in short, are easier to search and examine.

Divide and rule – Changes to the rules on filing divisional applications

As widely anticipated, Rule 36 of the Implementing Regulations has been amended so as to place greater limits as to when divisional applications can be filed.

From 1 April 2010, an applicant will be able file a divisional application provided that it is filed within two years from the first examination report issued on the earliest application or within two years from when the Examining Division first raises a lack of unity of invention objection, if later. 

In the majority of cases, the deadline for filing divisional applications is likely to be set by the first examination report and not by a later examination report raising lack of unity.

Under the new rule, it will still be possible to file “granddaughter” divisional applications, that is, divisional applications divided from an application which itself is a divisional application.  However, the time limit for filing such granddaughter divisional applications starts once the relevant examination report has been issued on the first application.   Therefore, it will not be possible to circumvent the time limits by filing a chain of divisional applications.

The new rules will apply to existing applications.  However, on applications where the relevant examination reports have already been issued and the new divisional application filing deadline would fall before or soon after the 1 April 2010 commencement date, a grace period allows divisional applications to be filed up until six months after 1 April 2010.

The importance of this rule change cannot be overstated.

Applicants currently enjoy the freedom to and security of being able to file a divisional application at any time while an application, or an appeal against refusal of the application, is pending.  For example, if an applicant’s business objectives change, then they can file a divisional application and pursue an invention which better suits their objectives.  Also, if an applicant is worried about the outcome of an application, for instance, if they are concerned that the application will be refused at oral proceedings, then they can file a divisional application as a precautionary measure and thus ensure the existence of a pending application. 

Once the rule change comes into effect, it will no longer be possible to file divisional applications at a late stage during the application procedure.

The changes will affect applicants across all technical fields.  However, they will particularly affect those who tend to file speculative applications or applications relating to several inventions with the intention of dividing the application at a much later date. 

Search matters – Changes to the rules regarding search and amendments

Applicants will see numerous changes in the search and examination procedure from 1 April 2010.

New Amended Rule 161 EPC – Amendment of Euro-PCT applications before examination

In a particularly far-reaching provision, revisions have been made to the existing rules which relate to the first stage after initiating European national phase processing of an international application.

Currently under Rule 161, once an application has entered into the European national phase, the EPO issues a communication which invites the applicant to amend the application, particularly the claims.  The applicant is under no obligation to amend.  However, this opportunity is usually taken to amend the application, for example, to reduce the number of claims and so minimise claims fees.

Under the revised Rule 161, if the EPO acts as the International Searching Authority (ISA) and/or as the International Preliminary Examination Authority (IPEA), then the EPO will invite the applicant to comment on their written opinion as ISA or IPEA and respond within one month of the invitation.  If the applicant fails to do so, then the application will be withdrawn.   Further processing is available in respect of this deadline.  Currently the fee for further processing is €210.

Thus, the invitation under Rule 161 - which is issued a month or so after European national phase entry - will become much more important and will need to be treated as if it were an examination report, although the content of the report will have been provided during the PCT phase. 

Moreover, due to the short time limit for filing a response, it will normally be necessary to prepare for the invitation before it issues, and in many cases before European phase entry.

Rule 70a EPC – Introduction of an obligation to respond to the written opinion

Currently, the EPO can issue a so-called “extended European search report” which contains a European search report and an opinion.  The opinion is generally comparable to a full examination report.

Under the current provisions, there is no obligation to respond to the written opinion.  The opinion is intended to help the applicant when deciding whether or not to pursue the application.

According to new Rule 70a EPC, it will become mandatory for the applicant to respond to the deficiencies raised in the opinion by filing observations and/or amendments.  

The deadline for responding to the opinion will be the time limit for requesting examination.  In most cases, this is six months following publication of the search report or, if the examination fee is paid before the search report has been issued (as is usually the case with Euro-PCT applications), two months from the date of the EPO communication inviting the applicant to indicate whether they wish to proceed further with the application.

Amended Rule 137 EPC – New rules as to when and to what extent applications can be amended

According to Rule 137, applicants are currently free to amend the application once they receive the European Search Report.  They are also free to make voluntary changes to the application when responding to the first examination report.

Under the revised rule, the applicant will no longer have the automatic right to make voluntary amendments in response to the first examination report.  Their final opportunity to make such amendments without the need for consent by the EPO, will be either when responding to the European search opinion mentioned above or, for Euro-PCT applications, in response to an invitation under Rule 161 EPC, which is normally issued about a month after entering into the European national phase.  Following this, any further amendments will require the consent of the Examining Division.

It is not clear whether the applicant will have the right to amend if no European search opinion is issued, which is currently the situation if the applicant pays the examination fee prior to issue of the search report and waives the right to indicate that it is required to proceed further.  One possibility is that the EPO will change their procedure such that an opinion is always issued prior to commencement of examination.

Removal of the right to amend in response to the first examination report means that applicants will not necessarily be able to introduce a lack of unity of invention following the first examination report for the purpose of extending the deadline for filing divisional applications.  If an amendment resulting in lack of unity was filed in response to any examination report, the EPO would be able to refuse discretion to allow the amendment, so preventing re-opening of the period for filing divisional applications.

Introduction of new Rule 62a EPC – New grounds for a partial search

The first rule change affects partial searches.

Under current Rule 64, a partial search is carried out whenever the EPO considers that the claims lack unity of invention.  When this occurs, only the first group of claims is searched and the applicant is invited to have the remaining group or groups of claims searched by paying a corresponding number of additional search fees.   The European search report is issued and the applicant is then free to pursue any one group of claims which have been searched.

New Rule 62a EPC, sitting alongside Rule 64, will broaden the grounds on which a partial search is performed.

Under the new rule, if the application contains more than one independent claim in a claim category (i.e. apparatus or method) and the claims do not fall within one of the exceptional circumstances set out under Rule 43(2) EPC (such as being inter-related products or different uses of a product), the EPO will invite the applicant to indicate which one of the multiple independent claims should be searched.  If the applicant fails to reply, the search will relate to the first independent claim in each category. 

There is no provision for amending the claims in response to the Rule 62a communication.  This is particularly relevant since claims which are left out of the search as a result of this new rule cannot be used as the basis of an amendment at a later stage.

Importantly, there does not seem to be any provision for paying additional search fees (unlike the situation where there is a lack of unity of invention), and it seems that new Rule 62a could result in it not being possible to obtain a search of independent claims in some circumstances.  

Therefore, it will be important to ensure that the claims filed with a new European application or on European national phase entry meet the requirements of Rule 43 wherever possible.  Where multiple inventions are claimed, the set of claims relating to each invention will need to meet the requirements of Rule 43.

Amended Rule 63 EPC – New procedure for “no search” cases

According to the current form of Rule 63 EPC, if the EPO considers that it is impossible to carry out a meaningful search, then it will simply issue a declaration to that effect.

Rule 63 EPC has been revised to offer the applicant an opportunity to persuade the EPO to carry out the search.

Under the amended version of the rule, when the EPO considers that it is impossible to carry out a meaningful search, it will invite the applicant to file a statement indicating the subject-matter to be searched.  The amended rule specifies a two-month response period.  If a statement is not filed or is insufficient, then the EPO will issue a declaration to the effect that it is impossible to carry out a meaningful search or perform a partial search if they can. 

Thus, this improves the position of applicants compared to the current position.

However, there is no provision for the filing of claim amendments in response to the new Rule 63 communication and it is not clear whether the EPO would agree to a request to import a limitation from the description into the claims, for instance to import computer hardware into a software claim, so as to make the claims “searchable”.

Amended Rule 64 EPC – Extension of period for requesting additional searches

As explained above, the EPO carries out a partial search whenever it considers that the claims lack unity of invention. Under these circumstances, the EPO notifies the applicant and invites the applicant to pay additional search fees.  Under the current rules, the EPO can set a response period of between two and six weeks.  

Rule 64 EPC has been amended by extending the period so that the applicant will have two months to request additional searches and pay additional search fees from issue of the partial search report. 

The Decisions of the Administrative Council implementing the rule changes can be found on the EPO website at http://www.epo.org/patents/law/legal-texts/decisions/archive/20090325.html and http://www.epo.org/patents/law/legal-texts/decisions/archive/20090325a.html.