Cambios en el el reglamento EPC desde el el 1 de abril de 2010: a a correr! Anna Barlocci, Mathieu de de Rooij Agentes de de Patentes Europeas ZBM Patents Zea, Zea, Barlocci & Markvardsen 10 10 de de Mayo de de 2010 2010 "Los Lunes de de Patentes" Madrid Centre de de Patents de de la la Universitat de de Barcelona Oficina Española de de Patentes y Marcas
Programa Objetivo de la EPO al introducir los cambios Overview de los principales cambios (situación anterior / cambio / aplicación / entrada en vigor): Menor flexibilidad en la búsqueda Obligación de responder a las objeciones manifestadas por el examinador en un informe de búsqueda de la EPO Menos posibilidades de modificar voluntariamente las reivindicaciones Severas restricciones a la presentación de solicitudes divisionarias Consecuencias para solicitantes y agentes Discusión de posibles estrategias 2
Objective of the EPO: increase procedural efficiency Source: EPO 3
Less flexibility in the search (1) Previous practice If non-unity: the examiner searched only the first invention. Further search fees payable to have other inventions searched If no meaningful search possible (lack of clarity, lack of conciseness, insufficiency,...): the examiner issued a nosearch or partial search communication under R.63 If several independent claims in the same category, with unity but not meeting R. 43(2): all claims searched later, in examination, only one (any of them) could be prosecuted 4
Less flexibility in the search (2) Rule 43(2) (unamended) (2) Without prejudice to Article 82, a European patent application may contain more than one independent claim in the same category (product, process, apparatus or use) only if the subject-matter of the application involves one of the following: (a) a plurality of interrelated products, (b) different uses of a product or apparatus, (c) alternative solutions to a particular problem, where it is inappropriate to cover these alternatives by a single claim. 5
Less flexibility in the search (3) Changes Rule 62a - Applications containing a plurality of independent claims (new) Rule 63 - Incomplete search (amended) 6
Less flexibility in the search (4) Rule 62a - Applications containing a plurality of independent claims (1) If the European Patent Office considers that the claims as filed do not comply with Rule 43, paragraph 2, it shall invite the applicant to indicate, within a period of two months, the claims complying with Rule 43, paragraph 2, on the basis of which the search is to be carried out. If the applicant fails to provide such an indication in due time, the search shall be carried out on the basis of the first claim in each category. (2) The Examining Division shall invite the applicant to restrict the claims to the subject-matter searched unless it finds that the objection under paragraph 1 was not justified. 7
Less flexibility in the search (5) Rule 63 Incomplete search (1) If the European Patent Office considers that the European patent application fails to such an extent to comply with this Convention that it is impossible to carry out a meaningful search regarding the state of the art on the basis of all or some of the subject-matter claimed, it shall invite the applicant to file, within a period of two months, a statement indicating the subject-matter to be searched. (2) If the statement under paragraph 1 is not filed in due time, or if it is not sufficient to overcome the deficiency noted under paragraph 1, the European Patent Office shall either issue a reasoned declaration stating that the European patent application fails to such an extent to comply with this Convention that it is impossible to carry out a meaningful search regarding the state of the art on the basis of all or some of the subject-matter claimed or, as far as is practicable, draw up a partial search report. The reasoned declaration or the partial search report shall be considered, for the purposes of subsequent proceedings, as the European search report..../... 8
Less flexibility in the search (6) Rule 63 Incomplete search (cont.).../... (3) When a partial search report has been drawn up, the Examining Division shall invite the applicant to restrict the claims to the subject-matter searched unless it finds that the objection under paragraph 1 was not justified. 9
Less flexibility in the search (7) New situation If non-unity: no changes If several independent claims in one category: only one searched (unless "no particular effort", as before); no possibility of paying further search fees If no meaningful search possible: the examiner asks the applicant for a "statement" before searching or issuing partial search / no search declaration Unsearched subject matter must be deleted from the claims 10
Overview of changes Less flexibility in the search Compulsory reply to EPO search opinion Amendments Time limit for filing divisionals 11
Compulsory reply to EPO search opinion (1) Previous practice Euro-direct applications: issue of EESR (objections) request for examination issue of "clone" office action reply to office action EESR (opt. reply) REQ.EX OA REPLY Euro-PCT applications: issue of EPO-ISR in int. phase (objections) entry in regional phase and request for examination issue of "clone" office action reply to office action EPO-ISR (opt. reply) REG.PH. OA REPLY 12
Compulsory reply to EPO search opinion (2) Rule 70 Request for examination (unamended) (1) The applicant may request examination of the European patent application up to six months after the date on which the European Patent Bulletin mentions the publication of the European search report. The request may not be withdrawn. (2) If the request for examination has been filed before the European search report has been transmitted to the applicant, the European Patent Office shall invite the applicant to indicate, within a period to be specified, whether he wishes to proceed further with the application, and shall give him the opportunity to comment on the search report and to amend, where appropriate, the description, claims and drawings. (...) 13
Compulsory reply to EPO search opinion (3) Changes Rule 70a - Response to the extended European search report (new) Rule 161 - Amendment of the application (Euro-PCT) (amended) No change in practice if there are no objections in EESR or EPO-ISA 14
Compulsory reply to EPO search opinion (4) Rule 70a - Response to the extended European search report (1) In the opinion accompanying the European search report the European Patent Office shall give the applicant the opportunity to comment on the extended European search report and, where appropriate, invite him to correct any deficiencies noted in the opinion accompanying the European search report and to amend the description, claims and drawings within the period referred to in Rule 70, paragraph 1. 15
Compulsory reply to EPO search opinion (4) Rule 70a - Response to the extended European search report (Cont.) (2) In the case referred to in Rule 70, paragraph 2, or if a supplementary European search report is drawn up on a Euro-PCT-application, the European Patent Office shall give the applicant the opportunity to comment on the extended European search report and, where appropriate, invite him to correct any deficiencies noted in the opinion accompanying the European search report and to amend the description, claims and drawings within the period specified for indicating whether he wishes to proceed further with the application. (6 months, see Guid. C-VI-111, A-VI-2.3) (3) If the applicant neither complies with nor comments on an invitation in accordance with paragraph 1 or 2, the application shall be deemed to be withdrawn. 16
Compulsory reply to EPO search opinion (5) Rule 161 Amendment of the application (1) If the European Patent Office has acted as the International Searching Authority and, where a demand under Article 31 PCT was filed, also as the International Preliminary Examining Authority for a Euro-PCT application, it shall give the applicant the opportunity to comment on the written opinion of the International Searching Authority or the International Preliminary Examination Report and, where appropriate, invite him to correct any deficiencies noted in the written opinion or in the International Preliminary Examination Report and to amend the description, claims and drawings within a period of one month from the respective communication. If the European Patent Office has drawn up a supplementary international search report, an invitation in accordance with the first sentence shall be issued in respect of the explanations given in accordance with Rule 45bis.7(e) PCT. If the applicant does not comply with or comment on an invitation in accordance with the first or second sentence, the application shall be deemed to be withdrawn..../... 17
Compulsory reply to EPO search opinion (6) Rule 161 Amendment of the application (cont.) (2) Where the European Patent Office draws up a supplementary European search report on a Euro-PCT application, the application may be amended once within a period of one month from a communication informing the applicant accordingly. The application as amended shall serve as the basis for the supplementary European search. (Thus, as in previous practice, if EPO was not ISA/IPEA, amendment of Euro-PCT before EPO is possible within one month from communication R.161, before EPO draws up supplementary ESR) 18
Compulsory reply to EPO search opinion (7) Direct European applications: 6 mo EESR Publ. EESR Request examination Reply EESR 19
Compulsory reply to EPO search opinion (8) Euro-PCT applications where EPO not ISA: 1 mo 6 mo ISR not EPO Euro-PCT Entry reg. phase Comm. R.161 Amend claims? SESR Confirm exam. Reply SESR 20
Compulsory reply to EPO search opinion (9) Euro-PCT applications where EPO is ISA: < 2 mo 1 mo ISR from EPO Euro-PCT Entry reg. phase Comm. R.161 Amend claims? Reply SESR No reply required if amendments Art 19/Art 34 PCT were filed, provided the amended claims are maintained in Euro-PCT; or if amended claims are filed upon entry, before issue of comm. R.161 21
Compulsory reply to EPO search opinion (10) New situation EESR / EPO-ISR/ SESR treated in practice like an office action Reply to objections must be filed earlier Tight time limit in Euro-PCT when EPO was ISA Further processing (Art 121) available if no reply Office action issued if "incomplete" reply 22
Overview of changes Less flexibility in the search Compulsory reply to EPO search opinion Amendments Time limit for filing divisionals 23
Previous practice Amendments (1) Applicant could amend the description, claims and drawings of his own volition, After receipt of ESR, and After receipt of first office action Amended claims could not relate to unsearched subjectmatter which did not combine with the originally claimed invention to form a single inventive concept Identifying amendments and their basis required by EPO 24
Amendments (2) Changes Rule 137 (2), (3) - opportunity for amendments of applicant's own volition (amended) Rule 137 (4) - identification and basis (new) Rule 137 (5) subject-matter of amended claims (amended) 25
Amendments (3) Rule 137 - Amendment of the European patent application (1) Before receiving the European search report, the applicant may not amend the description, claims or drawings of a European patent application unless otherwise provided. (2) Together with any comments, corrections or amendments made in response to communications by the European Patent Office under Rule 70a, paragraph 1 or 2, or Rule 161, paragraph 1, the applicant may amend the description, claims and drawings of his own volition. (3) No further amendment may be made without the consent of the Examining Division. 26
Amendments (4) Rule 137 - Amendment of the European patent application (cont.) (4) When filing any amendments referred to in paragraphs 1 to 3, the applicant shall identify them and indicate the basis for them in the application as filed. If the Examining Division notes a failure to meet either requirement, it may request the correction of this deficiency within a period of one month. (if no reply: application deemed withdrawn. Further processing (Art 121) available) (5) Amended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept. Nor may they relate to subject-matter not searched in accordance with Rule 62a or Rule 63. 27
Amendments (5) New situation Only one opportunity to amend of own volition Such voluntary amendments must be filed early Identification/basis of amendments legal requirement Claims not searched under new rules cannot be introduced later on 28
Overview of changes Less flexibility in the search Compulsory reply to EPO search opinion Amendments Time limit for filing divisionals 29
Time limit for filing divisionals (1) Previous practice A divisional application could be filed at any time up to the grant of the parent application The parent application could be itself a divisional from an earlier application ("chains" of divisionals were possible)
Time limit for filing divisionals (2) Changes Rule 36 (1) Conditions for filing European divisional applications (amended) Rule 36 (2) - language of divisionals (amended)
Time limit for filing divisionals (3) Rule 36 - European divisional applications (1) The applicant may file a divisional application relating to any pending earlier European patent application, provided that: (a) the divisional application is filed before the expiry of a time limit of twenty-four months from the Examining Division's first communication in respect of the earliest application for which a communication has been issued, or (b) the divisional application is filed before the expiry of a time limit of twenty-four months from any communication in which the Examining Division has objected that the earlier application does not meet the requirements of Article 82, provided it was raising that specific objection for the first time. (...)
Time limit for filing divisionals (4) Voluntary divisionals R.36(1)(a) clear case 1 24 mo EP filing EESR EP1 PCT filing ISR Reply to SR 1st OA Deadline all Grant / ref. / Divisionals withdr. / d.w. R.36(1)(a) div. EP2 filing
Time limit for filing divisionals (5) Voluntary divisionals R. 36(1)(a) clear case 2 24 mo EP filing EESR EP1 Reply to SR 1st OA Grant / ref. / withdr. / d.w. PCT filing ISR Deadline divisionals
Time limit for filing divisionals (6) Voluntary divisionals R. 36(1)(a) clear case 3 24 mo EP filing EESR PCT filing ISR Reply to SR 1st OA filing Grant / ref. / withdr. / d.w. Deadline Divisionals of EP1 Deadline Divisionals of EP2 R.36(1)(a) EP1 div. EP2
Time limit for filing divisionals (7) Voluntary divisionals R. 36(1)(a) clear (?) case 4 24 mo EP1 Filing - ISR/EESR - reply EPO info: filing 1st OA 1st OA 24 mo?! div EP2 Deadline all divisionals R.36(1)(a)??? (here EP1) But R.36(1)(a): "... first communication in respect of the earliest application for which a communication has been issued" (here EP2)
Time limit for filing divisionals (8) Mandatory divisionals R.36(1)(b) clear case 5 24 mo EP1 1st OA no lack of unity Deadline all Divisionals R.36(1)(a) 24 mo div. EP2 filing OA lack of unity Deadline Divisionals R.36(1)(b)
Time limit for filing divisionals (9) Mandatory divisionals R.36(1)(b) (maybe) clear case 6 24 mo 24 mo 24 mo EP1 1st OA no lack of unity Deadline Divisionals R.36(1)(a) OA lack of unity A-B Deadline Divisionals R.36(1)(b) OA lack of unity C-D New deadline Divisionals R.36(1)(b) EPO info:
Time limit for filing divisionals (10) Triggers for 24-mo time limits 1st OA = 1st comm. Art 94(3), or comm. R.71(3) if 1st If the 1st OA is the intention to grant, then the deadline for filing divisionals will most likely be the grant of the parent (well before 24 mo.) EESR/SESR are not OA and do not trigger time limit 24-mo for mandatory divisionals also triggered by interview, phone call, summons to OP, OP,...
Time limit for filing divisionals (11) New situation Only "safe" time limit: 24 mo. from first OA issued for any application in the sequence Further 24 mo. from non-unity objection raised for the first time, if you can get one from examiner (can you?) Objection under R.137(5) not a non-unity objection, no new 24-mo. time limit Objection under R. 43(2) not a non-unity objection, no new 24-mo. time limit If time limit missed: Further processing (Art. 121) not available Re-establishment (Art. 122) possible if conditions met
Summary of changes Source: EPO
Entry into force / transitional provisions New Rules 62a, 63, 70a, 137: apply to EESR/SESR drawn up from 1st of April 2010 New Rule 161: applies to Euro-PCT applications for which R.161 communication is issued from 1st of April 2010 New Rule 36: for applications for which the 1st OA has already been issued before 1st of April 2010, divisionals may be filed at least until 1st of October 2010.
Doubts and difficulties (1) Maybe some inconsistency between rules and information provided by EPO? e.g. 24-mo of R.36(1)(a) counted from 1st communication in earliest application for which a communication has been issued, or from first communication in earliest application of sequence? Uncertainty until BA case law developed Potential changes in interpretation against applicant's interests: keep on the safe side!
Doubts and difficulties (2) How will examiners apply the new rules? Higher degree of discretion (or more relevance) e.g. objections Art. 82 / Rule 43(2) if several independent claims are filed during prosecution: according to C-III-3.3, "Where the application also lacks unity of invention, the examiner may raise an objection under either Rule 43(2) or Art. 82 or under both. The applicant cannot contest which of these objections has priority (see T 1073/98, Reasons 7.2)." Also possible objection R.137(2),(3) not time for own-volition amendments No possibility to appeal
Consequences for applicants/attorneys (1) Less possibilities to have several aspects searched at an early stage, in one application Unsearched subject matter cannot continue, but filing of divisionals restricted Less possibilities to choose invention to be prosecuted in the application Shorter time limits to file replies and to decide on subject-matter to be protected In general, shorter prosecution times and earlier expenses
Consequences for applicants/attorneys (2) Uncertainty especially about the possibility to obtain additional time for mandatory divisionals (even if the non-unity situation "really" arises during prosecution!) Advice to clients difficult Tighter time limits Broad range of strategies available (many not yet safe), depending on particular case and client
Potential remedies/strategies (1) (not necessarily useful or efficient...!) Delay prosecution using further processing, not filing indication and basis of amendments, etc. (little time advantage!) Study EESR/ISR/SESR as early as possible File incomplete reply to EESR/ISR/SESR to obtain a 1st OA on similar objections to those of SR (risk: 1st OA "easy" and issued early) If R.43(2) objection in examination, argue that claims fall in R43(2)(c) case (case law not too clear)
Potential remedies/strategies (2) (not necessarily useful or efficient...!) File "precautionary" divisionals at the end of the first 24-mo time limit (expensive!) With non-unity, to trigger new time limit (no guarantee that objection will be non-unity!) Repeat with a further divisional, with a different lack of unity, to get another time limit (EPO will try to avoid!) File early divisional, accelerate: assess patentability before the 24-mo deadline is triggered by 1st OA in parent (expensive; maybe change in EPO interpret.?)
Potential remedies/strategies (3) (not necessarily useful or efficient...!) Obtain early information on the patentability of all potentially interesting subject-matter Design the strategy depending on the information available and the likelihood of needing divisionals Make sure that each divisional contains all the subject matter you may want to later divide this may involve adding some sort of claim structure into the description
Potential remedies/strategies (4) (not necessarily useful or efficient...!) If several claims not complying with R.43(2) Add broad main claim even if barely new or not new, or claim with alternatives, to avoid R.62a(1) problem (still risk of R.63 objection or non-unity a posteriori) File PCT to obtain complete search (US provis. then unnecessary) with EPO/ISA to avoid SESR in Euro-PCT and be able to choose claims to be prosecuted in exam (who will make the search?)
Potential remedies/strategies (5) (not necessarily useful or efficient...!) If non-unity Pay additional search fees to assess patentability and evaluate interest to file divisionals Amend when replying to the EESR/ISR, to avoid lack of unity objection in 1st OA Later you can file divisionals (and get a refund of the search fees paid in the search stage)
Potential remedies/strategies (6) (not necessarily useful or efficient...!) Euro-PCT from foreign clients Discuss advantages/drawbacks of EPO as ISA (if choice possible) Recommend early review of claims by EP attorney, well before regional phase deadline, and preferably even before filing PCT
Your opinions, doubts, strategies,...? Gracias por vuestra atención Gracias por vuestra atención