Raising the Bar and EPC changes as from 1 April 2010
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1 Platform Formalities Officers 1 st Annual Formalities Officers Conference Rijswijk, 11 March 2010 Raising the Bar and EPC changes as from 1 April 2010 Luise Zimmermann European Patent Office
2 Content Raising the Bar Clarification of scope of application prior to search Mandatory reply to negative ESOP/WO-ISA/IPER Indication of basis of amendments Voluntary/mandatory divisional applications Increase of procedural and administrative fees Other changes /39
3 Raising the Bar Is definitely not this: /39
4 Raising the Bar More this: /39
5 Raising the Bar "Grant patents only for innovations with sufficient inventive merit meeting the needs of society". Right benchmark for inventive step Clarity regarding subject matter of search Substantive examination within scope of the subject matter searched Focussed search & examination procedure Greater legal certainty with respect to patented subject matter /39
6 Raising the Bar Clarification of scope of application prior to search /39
7 Rule 62a and Rule 63 EPC New Rule 62a EPC - multiple independent claims Amended Rule 63 EPC - clarification of complex applications The legal principle If the application... contains an unallowable number of independent claims per category (R. 62a EPC), then the examiner will invite the applicant to indicate, within a period of two months (non-extendable),... the claims complying with Rule 43(2) EPC on the basis of which the search is to be carried out. is complex to such an extent that it is not possible to carry out a meaningful search (R. 63 EPC), the subject-matter to be searched. Clarification of scope of application prior to search /39
8 Rule 62a and Rule 63 EPC Examiners are facing increasing numbers of applications with multiple independent claims in one category and/or which pose major complexity problems. Under the new provisions, point in time for raising an objection under Rule 43(2) EPC (multiple independent claims) is advanced from end of search to beginning of search. Potential scope of protection more clearly defined at search stage rather than in examination or grant phase only, ensuring that the search is focussed on the subject matter for which protection is claimed. Clarification of scope of application prior to search /39
9 Rule 62a and Rule 63 EPC The EPO invitation to clarify can refer to an objection under Rule 62a only (Form 1056a) Rule 63 only (Form 1056b) both Rule 62a and Rule 63 (Form 1056c) vin each of these communications, the applicant can be informed, in addition, about a problem with unity of the invention (Rule 64) veach invitation can be accompanied by a reasoning (Form 2906) Time limit for response: two months (non-extendable) New time limit of Rule 64(1) EPC - payment of further search fees in case of non-unity search report: also two-months (non-extendable) Clarification of scope of application prior to search /39
10 Rule 62a and Rule 63 EPC In case of no reply (in due time)... the search report shall be drawn up on the basis of the subject matter of the first independent claim in each category (R. 62a EPC) a partial search report or possibly only a reasoned declaration issued (R. 63 EPC). Legal remedy in case of non-observance of time limit: request for re-establishment of rights (Art. 122, R. 136 EPC) The new procedure applies to European patent applications for which the (supplementary) European search report has not yet been drawn up on Clarification of scope of application prior to search /39
11 Raising the Bar Mandatory reply to negative ESOP/WO-ISA/IPER /39
12 Raising the Bar New Rule 70a EPC - response to European Search Opinion (ESOP) Amended Rule 161 EPC - response to WO-ISA / IPER The legal principle If the EPO has noted deficiencies with respect to patentability... in the opinion accompanying the European search report, in the opinion accompanying the supplementary European search report, in the WO-ISA / IPER, then the applicant will be invited to correct the deficiencies / file any amendments... within six months of publication of the European search report (R. 70a(1), (2) EPC). within six months of notification of the invitation to declare the maintenance of the application (R. 70a(2) EPC). within one month of notification of the communication under Rule 161(1) EPC. Response to ESOP/WO-ISA/IPER /39
13 Raising the Bar In the ESOP/WO-ISA/IPER, the examiner already mentions the reasons and objections why the European patent application (and the invention to which it relates) does not meet the requirements of the EPC. There has so far been no obligation for the applicant to reply prior to the start of substantive examination. Where no objections are raised in the ESOP/WO-ISA/IPER, also under the new provisions no reply is mandatory, but applicant is free to comment and file any amendments (Rule 137(2) EPC). Response to ESOP/WO-ISA/IPER /39
14 Rule 70a EPC Response to ESOP EP applications and Euro-PCT applications with supplementary search (EPO is not ISA) Invitation to file substantive response to ESOP (Rule 70a(1), (2) EPC) is included as a new element in existing EPO communications: v EP: communications despatched after publication of search report: EPO Form 1081: examination fee outstanding (R. 70(1) EPC) or EPO Form 1082: maintenance of application outstanding (R. 70(2) EPC) or EPO Form 1083: information about publication of search report (R. 69 EPC) time limit = six months after publication of search report v Euro-PCT: communication despatched after establishment of supplementary European search report EPO Form 1224: maintenance of application outstanding (R. 70(2) EPC) time limit = six months after notification of communication Response to ESOP /39
15 Rule 70a EPC Rule 70a EPC applies to European patent applications for which the extended (supplementary) European search report is drawn up on or after : Where search opinion is negative: response is mandatory Where search opinion is positive: opportunity to comment / file amendments Applications where the applicant has waived his right to receive a communication pursuant to Rule 70(2) EPC (valid request for examination before transmission of the search report) are not concerned as no ESOP is sent during the search phase. Response to ESOP /39
16 Rule 161 EPC - Response to WO-ISA / IPER Euro-PCT applications without supplementary EP search (EPO is ISA and, if preliminary examination, also IPEA) After performance of the acts for entry into the European phase (R. 159(1) EPC), an invitation to respond to/ comment on the opinion established by the EPO in the international phase (R. 161(1) EPC) is to be despatched before European phase examination starts Any amendments/comments filed or indications made on entry in the European phase (Form 1200) with respect to the application documents on which EP phase processing is to be based are to be taken into account: Amended claims under Article 19 PCT Amended description/claims/drawings under Article 34 PCT Amended description/claims/drawings filed on entry into the EP phase (R. 159(1)(b) EPC) Comments with respect to the WO-ISA / IPER only Response to WO-ISA / IPER /39
17 Rule 161 EPC Where the EPO has established a negative WO-ISA or IPER, the applicant must file a substantive response for the European phase, within a time limit of one month from notification of the communication pursuant to Rule 161(1) EPC (Form 1226A). Amendments or comments filed on entry into the European phase (Form 1200), or the indication of the documents that are to form the basis of European phase processing, may be a valid response to a negative WO-ISA or IPER (Guidelines for Examination in the EPO, C-VI, 3.5.1) Where no response obligatory (already filed or positive WO-ISA / IPER), the applicant is given the opportunity to comment / file amendments (Form 1226B) Response to WO-ISA/IPER /39
18 Rule 161 EPC Amended Rule 161 EPC applies to European patent applications for which no communication under Rule 161 has been issued on Where EPO WO-ISA / IPER negative and no response already filed on entry into the European phase: substantive response mandatory (R. 161(1) EPC, Form 1226A) Where EPO WO-ISA / IPER positive, or negative with response already filed: opportunity to comment / file amendments (R. 161(1) EPC, Form 1226B) Where EPO has not acted as ISA: opportunity to file amendments as basis for supplementary European search (R. 161(2) EPC, Form 1226C) In all cases, combined communication under Rule 161 and Rule 162 (invitation to pay any claims fees due) Response to WO-ISA/IPER /39
19 Rule 70a and Rule 161 EPC Failure to respond to a negative ESOP / WO-ISA / IPER in due time: Application deemed withdrawn Legal remedies: Request for a decision (R. 112 (2) EPC) Request for further processing (Art. 121, R. 135 EPC) One loss of rights communication (R. 112(1) EPC) may refer to several losses of rights (e.g. in EP applications: non-payment of examination + designation fees, non-response to ESOP) more than one further processing fee may be due! Response to ESOP/WO-ISA/IPER /39
20 Raising the Bar Indication of the basis of amendments /39
21 Raising the Bar Amendments - Modified Rule 137 EPC Rule 137(1): No amendments allowed before receipt of search report (no change). Rule 137(2): Only one opportunity for own volition amendment: In response to Rule 70a / 161 EPC communications; or In case Rule 70(2) EPC communication waived - until response to first communication under Article 94(3) EPC Rule 137(3): Further amendments require consent of Examining Division Rule 137(4): Applicant to identify and provide basis for all amendments Period for response to Examining Division's communication requesting compliance = one month Failure to respond in due time = application deemed withdrawn Rule 137(5): Former Rule 137(4) EPC + amended claims may not relate to subject matter not searched as a result of application of Rule 62a or 63 EPC. Indication of basis of amendments /39
22 Indication of basis of amendments Amended Rule 137(4) EPC Identification of amendments and indication of their basis The legal principle Whenever the applicant files amendments, he must identify them and indicate the basis for the amendments in the application as originally filed. In the absence of the required identification or indication, the examining division may request the correction of the deficiency within a period of one month (non-extendable). If no reply is received, the application will be deemed to be withdrawn (Art. 94(4) EPC). The applicant has the option to request further processing (Art. 121, R. 135 EPC). Indication of basis of amendments /39
23 Indication of the basis of amendments Basis of amendments is commonly indicated by many applicants. However, if not done, clarification can be timeconsuming for the examiner. Amended Rule 137(4) EPC provides an instrument for requesting compliance with best practice (new invitation: EPO Form 2909) Procedure applies to European patent applications with (supplementary) EP search report drawn up on/after Euro-PCT applications for which the (supplementary) ISR is drawn up by the EPO as ISA on/after (supplementary ISR only after ) Indication of basis of amendments /39
24 Voluntary/mandatory divisional applications /39
25 Divisional applications Amended Rule 36(1) EPC Two requirements must be met when filing a divisional application: (i) the application to be divided must be pending and (ii) at least one of the two periods mentioned below must not yet have expired: (a) the period for voluntary division under Rule 36(1)(a) EPC or (b) the period for mandatory division under Rule 36(1)(b) EPC, where applicable. Divisional applications /39
26 Voluntary division Voluntary division if: the earlier application is pending non-expired 24-month time limit from the Examining Division's first communication in respect of the earliest application for which a communication has been issued What is the Examining Division's first communication? Communication under Article 94(3) and Rule 71(1), (2) EPC or, where appropriate, Rule 71(3) EPC What if there is a sequence of European divisional applications? Time limit calculated from issue of Examining Division's first communication for the earliest application in the sequence Does the '10-day rule' for calculation of the time limit apply? Yes Divisional applications /39
27 Mandatory division Mandatory division? earlier application pending non-expired 24-month time limit from any communication in which the Examining Division raises a specific objection under Article 82 EPC for the first time What could be an event starting such a 24-month time limit? E.g.: notification of summons to oral proceedings, date of oral proceedings, telephone interview (see Guidelines, A-IV, ) Can a new 24-month time limit be triggered? Only if a communication from the Examining Division raises a new, different non-unity objection Divisional applications /39
28 Second and subsequent-generation divisional applications voluntary divisional of EP2 possible voluntary divisional of EP1 possible 24M 24M Divisional applications /39
29 Language of divisional applications Amended Rule 36(2) EPC A divisional application must be filed in the language of the proceedings of the earlier (parent) application. If the latter was not in an official language of the EPO, the divisional application may be filed in the language of the earlier application (translation within two months of filing the divisional). Divisional applications /39
30 Divisional applications EPO Form 1001 (Request for grant) updated Date of relevant communication from which 24-month period has started running to be indicated In case divisional application is filed outside the 24-month period, applicant has the option of requesting reestablishment of rights (Art. 122, R. 136 EPC). Divisional applications /39
31 Divisional applications Entry into force: Amended Rule 36(1) and (2) EPC Transitional provisions applies to European divisional applications filed (= received) on or after 1 April 2010 if the newly established time limits under Rule 36(1) EPC have expired before 1 April 2010, a divisional application may still be filed within six months from that date (i.e. until 1 October 2010) if the newly established time limits are still running on 1 April 2010, they will continue to do so for not less than six months (i.e. until 1 October 2010) Divisional applications /39
32 Increase of procedural and administrative fees /39
33 Fee increase Decision of the Administrative Council of 28 October 2009 amending the Rules relating to Fees and adjusting the amount of the reduction in the fee for the supplementary European search where the international search report was drawn up by one of the European International Searching Authorities (CA/D 19/09), OJ EPO 2009, 587 Decision of the President of the European Patent Office dated 15 November 2009 revising the Office s fees and expenses, OJ EPO 2009, 616 Schedule of fees and expenses applicable as from 1 April 2010, Supplement 1 to Official Journal 3/2010 In general, all procedural and administrative fees are affected New amounts apply to payments made on or after 1 April 2010 (= date of payment, Art. 7 RFees) If old amount is paid on or after 1 April 2010 by deposit account: ex-officio correction (Form 2935) by bank transfer, within six months after entry into force: two-month period for paying shortfall (Form 1166) Attention automatic debiting procedure: fees are debited on last day of period for payment! Fee increase /39
34 Fee-related forms New paragraph inserted into forms mentioning a fee amount: Fee increase /39
35 Other changes /39
36 Other changes Montenegro is new extension state as from 1 March 2010 Albania will be the 37th EPC contracting state as from 1 May 2010 EPO as International Searching Authority will perform supplementary international searches (Rule 45bis PCT) as from 1 July /39
37 /39
38 Raising the Bar and EPC changes as from 1 April 2010 Any questions? /39
39 Thank you for your attention! Luise Zimmermann Directorate Practice and Procedure EPO The Hague
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