EPO & R.161 Shenanigans

Those of you on EPO Communication Watch may have noted the insertion of a new paragraph in the R.161 “B” Communication.

It appears the EPO are getting annoyed by Applicants avoiding a compulsory reply to the new R.161 EPC Communication by filing any old amendments or comments at regional phase entry (see previous post). They have thus added the paragraph below in threatening bold type:

“Please note that, should you have already filed comments/amendments, which however do not address the deficiencies noted in the written opinion of the International Searching Authority or in the International Preliminary Examination Report or in the explanations pursuant to Rule 45bis.7(e) PCT to the Supplementary International Search Report, and should you choose not to react to the present communication, further amendments of the application documents can only be made with the consent of the Examining Division (R. 137(2) and (3) EPC).”

This paragraph simply reminds Applicants that this is the last point at which voluntary amendments may be filed; however, the sub-text appears to be: file a proper response or else. The problem is, legally, R.161 is a bit of a mess and there is no real “or else” sanction; Applicants can continue avoiding a compulsory reply in the usual manner.

It will be interesting to see whether the EPO begin to change practice to force earlier substantive amendment.

PCT Rule Changes – 1 July 2010

The eagle-eyed among you may have noticed some minor changes to the PCT Rules that came into force on 1 July 2010. Changes to practice appear negligible.

Amendments (to keep the EPO happy):

  • You need to provide basis for claim amendments (Rules 46.5(iii) , 66.8(a),(c)).
  • Penalty for non-compliance: International Preliminary Examination Authority (IPEA) may ignore your amendments when drawing up the International Preliminary Examination Report (IPER – Rule 70.2(c-bis) ).

Supplementary International Search (SIS – this came in on 1 January 2009: keep up):

  • The Supplementary International Search Authority (SISA) may consider a SIS-request not to have been made if it covers claims it will/can not search (Rule 45bis.5(g),(h)). For example, EPO will not search business methods from the US.
  • SISA may limit the number of claims they search (Rule 45bis.9(c)).

Fee Amounts (stop reading – not important):

  • The calculations used to come up with non-Swiss currency equivalents have changed.