Category: EPO

Supply of Search Results – EPO Rule Changes from 1 Jan 2011 (R.s 141 & 70b EPC)

On 1st January 2011 new Rules 141 and 70b EPC come into force. They stipulate new requirements for supplying search results on priority applications. The rule changes apply to European patent applications filed on or after 1 January 2011 (including divisional and international applications).

Search Results - w/ thanks to Niklas Bildhauer

While the current version of the EPC (European Patent Convention), in the form of Article 124 EPC, allows for the European Patent Office (EPO) to invite the applicant to provide information on prior art cited on related applications, it has generally only been used in rare occasions on individual cases. However, following a successful pilot program, the EPO has added more teeth to the provision; worryingly appearing to head in the direction of the onerous (and somewhat confusing) US Information Disclosure Statement (IDS).

Amended Rule 141 EPC

Amended Rule 141(1) EPC requires that the applicant provide a copy of the results of any search that was carried out on a priority application when filing a convention European application or when entering the regional phase in Europe. (If the results are unavailable they must be filed “without delay after such results have been made available”.)

Now, I expect most of you are saying: “what if I do not provide these results?”

  • If the priority application is a GB patent application (with existing search results), you do not need to worry: the kind gentlepeople of the UKIPO will (they promise) provide a copy of the search results to the EPO. This should be a relief to UK based EPAs whose UK clients file GB priority applications with a view to obtaining search results within the priority year.  However, I would keep an eye on the exact implementation of this exchange.
  • Amended Rule 141(2) EPC provides for other automatic exchanges to relieve the burden on the applicant. Keep your eyes open for details of such exchanges in the coming months.
  • If no automatic exchange exists, Amended Rule 141(3) EPC enables the EPO to issue an invitation with a 2-month time limit requesting the search results.
    • It is not entirely clear what happens if you fail to reply to the invitation. The likely answer is nothing. As amended R.141(3) EPC explicitly mentions Article 124(1) EPC, it is assumed the “invitation” of amended R.141(3) EPC implements the “invitation” present in Article 124(1) EPC. Article 124(2) EPC states that the sanction for failing to supply search results is the application is deemed to be withdrawn; however, it is not clear whether Article 124(2) EPC will apply directly to this invitation (i.e. deemed withdrawn if you do not reply) or whether R.70b (discussed below) will implement the sanction of Article 124(2)EPC. The latter interpretation looks the most likely.

Amended Rule 70b EPC

Assuming that nothing happens if you fail to supply search results when requested under R.141(3) EPC, the case will proceed happily along to examination. At this point amended Rule 70b(1) EPC gives the Examining Division the power to spot your evasion and issue (another) invitation to provide search results.

If no reply is provided the application is deemed withdrawn (amended R.70b(2) EPC). However, amended R.70b EPC does give you the option to file a statement saying that the search results are unavailable. It is unclear what would happen if you provided this statement with knowledge that it was incorrect.

As amended R.70b EPC only kicks in at the start of examination, there will likely be no ongoing duty to disclose search reports (cf. US) – the European Examiners simply wish to check other prior art searches before starting substantive examination (although this is not confirmed).

Practical Advice

On receipt of new cases, EPAs should check for a priority claim. If at least one priority application exists they should ask the instructing party for a copy of any search results issued on the priority application(s).

As a matter of practice, EPAs should begin requesting that search results are supplied for convention EP and ex-PCT cases. If the priority applications are accessible via online patent inspection sites this should be noted as search results may be supplied without requiring lengthy communication chains.

More Details

EPO Notice: http://www.epo.org/patents/law/legal-texts/journal/informationEPO/archive/20100803.html .

IPKat Post: http://ipkitten.blogspot.com/2010/08/rule-141-and-further-epo-obstructions.html (interesting discussion in the comments on possible variation between the different languages).

**Update**

The EPO has added a number of exceptions which removes the bite somewhat. See post here.

EPO Forms – A Spotter’s Guide

My good colleague David O’Connor has recently delved into the murky world of the EPO rule changes and has come up with some interesting findings.

Communications before Search Report

There are three new communications sparked by the recent change in the EPO rules:

  • Form 1056A – this sets out an objection under new Rule 62a.
    • It sets a two-month time limit (from the date of the form) in which to elect a single independent claim in each category (apparatus, method etc) for search.
    • If no election is made the first independent claim in each category is searched.
    • Beware: you will not be able to later limit the claims  to unsearched subject-matter.
    • Often seen: when US claim sets are filed without amendment.
  • Form 1056B – this sets out an objection under new Rule 63.
    • It sets a two-month time limit (from the date of the form) in which to indicate the subject-matter to be searched.
    • If no indication is made the European Patent Office (EPO) may only partially search your claims (or give-up and say no search could be performed).
    • Often seen: when business method / software claims are filed, or following the filing of poor translations.
  • Form 1056C – a rarer beast, a chimera of both objections.
    • Found following, for example, the filing of a poor translation of a Japanese business method.

The parasitic form 2906 may sometimes be found attached to any of the above, offering an explanation of the objections. A lack of unity objection can also be additionally raised.

Beware there is no extension available. Further processing is ruled out.

A lesser spotted 1056A
A lesser spotted 1056A

Communications following Search Report

Some new faces, old favourites and contemporary twists:

  • Form 1081 – issued when an examination fee is due 6 months after publication of the search report (R.70(1) EPC).
  • Form 1082 – issued when the examination fee has been paid, the applicant must indicate whether they wish to proceed with examination (R.70(2) EPC).
  • Form 1224 – same as form 1082 for ex-PCT applications, where a supplementary Search Report is drawn up by the EPO.
  • Form 1083 – issued when the examination fee has been paid and the applicant has waived their right to indicate under R.70(2)EPC. This is a plainer specimen simply providing publication details.

The addition of new rule 70a EPC spices things up a little. This rule requires a mandatory response to the Written Opinion of the Examiner that accompanied the Search Report. If a response is not filed the application is deemed to be withdrawn. The time limit is that set by R.70(1)/(2), which is now mostly six months.

Following all these changes, you will notice some extra plumage at the foot of the forms:

Bottom of the Form
Look closely now

The form number is first visible on the left-hand-side. This is followed by a date (I am guessing month and year of last form revision). Then we have same strange codes:

  • OFS/NFS – we believe these refer to Old Fee System and New Fee System, presumably indicating the fees that apply if any are due.
  • RTB/non-RTB – through a process of Holmean deduction, it is pretty much assured this refers to the EPO’s beloved “Raising the Bar”, a phrase of almost political vacuity. Basically if you see “RTB” on a form it means the new rules apply;  “non-RTB” means the old rules apply.
  • ESOP01=Y/ESOP01=N – translates as European Search Opinion is positive (says “yay”) and European Search Opinion is Negative (says “nay”).  Following a positive opinion one would assume that there are no deficiencies to address and thus that no response need be filed. Following a negative opinion there will be deficiencies to address and thus a response will be needed to avoid the application being deemed withdrawn.

EP & US Excess Claims Fees

Patents can be an expensive business. However, there are a number of ways you can reduce the fees for a new application.

Today: claims fees.

Many national patent offices punitively price excess claims fees to make their jobs easier during examination. It is fairly easy to be caught out by this practice and see your official fees double for fairly little return.

Stack of Euros with thanks to Andres Rueda
Stack of Euros with thanks to Andres Rueda

In Europe excess claims fees are due for all claims over 15.  The 16th to 50th claims have fees of 210 euros each. Each  claim over 50 has a fee of 525 euros. (Correct as of 6 August 2010 – see here for current fee schedule).

In the US excess claims fees are due for all claims over 20. Each claim over 20 has a fee of 52 dollars.  Independent claims in excess of 3 have a fee of 220 dollars. Multiple dependent claims get hit with a 390 dollar fee. (US fees are reduced by half for a small entity – correct as of 6 August 2010 – see here for current fee schedule).

If you are thinking about filing a patent application in Europe or the US, and the issue has not been raised, ask your patent attorney about whether there are any claims fees payable on your application. If there are you may wish to reduce the number of claims within your claim set, remove multiple dependencies or reduce the number of independent claims. Often dependent claims of limited value can be cut (e.g. claims of the form: “and the result is displayed on a display device…”).

If possible aim for a maximum of 15 claims in Europe and a maximum of 20 in US.

If further possible aim for no multiple dependencies and a maximum of 3 independent claims in the US.

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.

“Software” Patents in Europe

Well, to be precise, computer-implemented inventions under the European Patent Convention.

The Enlarged Board of Appeal has just issued a decision in referral G03/08 (for background see here). The Enlarged Board have decided that the referral is inadmissible. The accompanying opinion states that previous decisions of the Boards of Appeal are not sufficiently “different” (i.e. “conflicted”) to warrant clarification from the higher Enlarged Board.

Better men than I have summarised the decision here:

http://www.ipjur.com/blog2/index.php?/archives/150-EPO-EBoA-Opinion-in-re-G-0308-Patentability-Of-Computer-Implemented-Inventions.html

http://ipkitten.blogspot.com/2010/05/g-308-software-patents-decision-is-out.html

[Update] and here: http://www.iam-magazine.com/blog/Detail.aspx?g=cc296bce-5de8-484c-ac43-95d5b6ce68df featuring Gill Jennings & Every‘s Peter Finnie

To be honest, the decision was pretty much expected: the European Patent Office (EPO) has been taking a fairly consistent approach to computer-implemented inventions and has a growing body of learning materials on the subject. In fact, by no small coincidence, the book “Patent Law for Computer Scientists“, written by EPO Patent Examiners was released a few days ago. I have ordered a copy and will let you know if it is of any use. A review can be found here.

However, the opinion is not without merit. Its 60-odd pages set out the current state of the law on the issue and may provide a useful caselaw summary. I will attempt to read through the pages of dense courier font shortly.

Rule 70a EPC & Written Opinions

You have to love the level of clarity behind the EPO Rule Changes.
Blurry Train c/o Richard Eriksson
Take for example R.70a EPC and its application to International applications filed before 1 July 2005 for which no Written Opinion is drawn up:
  • New Rule 70a(2) EPC refers to the case “if a supplementary European search report is drawn up”. This implies that a response is required when a supplementary European search report is drawn up. However, the rule then discussing commenting on “the extended European search report” and “where appropriate…the opinion accompanying the European search report”. This implies that an opinion is required before a response under R.70a(2) EPC is required. So far, so vague.
Luckily, the (not-quite-complete, not-quite-draft) Guidelines for Examination (B XII 9) give us some handy guidance:

“There is, however, no requirement for the applicant to respond to the European or supplementary European search report where this was drawn up before 1 April 2010, where it is not accompanied by a search opinion (see XII, 1.1 for applications for which a search opinion is prepared) or where the search opinion was positive (see XII, 3.9).”

So basically the rule seems to be “no opinion, no response required”.

You can, however, file a response if you wish:

“…the applicant may still respond to the search report according to Rule 137(2) if he so wishes. In such cases, the applicant is encouraged to respond to the search report before the application enters the examination stage (see C-VI, 1.1). “

Time Limits & Volcanic Ash (R.134 EPC)

The European Patent Office has declared a dislocation in the delivery of mail from 15 to 28 April 2010.

As the dislocation affected inter alia Germany and the Netherlands, time limits to be observed vis-à-vis the EPO, which would have expired in the period from 15 to 28 April 2010, have been extended to 29 April 2010 (see Rule 134(2) EPC).

As far as time limits under the PCT are concerned, applicants are referred to Rule 82 PCT. This provision, however, does not apply to the priority period. If an international application was received at the EPO after expiry of the priority period, restoration of the right of priority may be available (Rule 26bis.3 PCT).

R.161 EPC Communications

I have been doing some detective work in response to a new R.161 EPC communication. I have found out the following (disclaimer: procedure appears to be still in limbo at the EPO at the moment so use any common sense you have available; the following may be liable to change):

Forms

There are 3 versions of the new R.161 EPC Communication: – EPO Form 1226A; EPO Form 1226B; and EPO Form 1226C. Look in the lower left-hand corner for the number.

  • EPO Form 1226A is issued if there has been a negative opinion by the EPO and no amendments or comments have been filed on regional phase entry. A response to this form within 1 month is mandatory (i.e. or else the application is deemed withdrawn) and your attention is drawn to this on the form.
  • EPO Form 1226B is issued if there has been a negative opinion by the EPO and amendments or comments have been filed on regional phase entry. A response to this form within 1 month is voluntary (i.e. the application is NOT withdrawn if you do not response). This is indicated by the wording “you may comment….”.
  • EPO Form 1226C is issued in other cases (e.g. non-EPO ISA, positive opinion). A response to this form within 1 month is voluntary (i.e. the application is NOT withdrawn if you do not response). This communication resembles the old R.161EPC communication.

This means that the situations where a reply to the R.161 EPC Communication is required is determined by the EPO and indicated by the form that is sent.

What Counts as “Amendments or Comments”?

For this we look at section C VI 3.5.1 of the revised Guidelines for Examination. This sets out a number of situations that I will summarise below. As always, take the wording of the Guidelines, rather than my summary, as legal basis (i.e. READ the section at the above-link).

“New amendments and/or comments”

From a conversation with a formalities officer and the wording of the forms, it appears (thus far) that any amendments filed on European regional phase entry count as a response under R.161(1)EPC. For example, a case where the claims were amended to reduce excess claims fees resulted in a “B” form that does not require a mandatory reply.

The revised Form 1200 contains two check boxes for each of Chapter I or Chapter II entry respectively indicating: 1) “unless replaced by the amendments enclosed” and 2)”Comments on the written opinion established by the EPO as the International Searching Authority and/or observations are enclosed”. From the wording of the Guidelines (“and/or”) it would appear that either count as a response under R.161(1)EPC. The Guidelines imply that at least one of the check boxes needs to be checked to avoid an “A” communication. This makes sense at a formalities level.

I am told that some version of the EPOnline form have not been updated yet to include the latter checkbox; however, in this case the attaching of amendments to the online Form 1200 and the checking of the old checkbox indicating their presence may be enough to avoid an “A” communication.

“New” is mentioned in the Guidelines but not defined. Would attaching the existing claims as “amendments” bypass the “A” communication?

When a Response is Required…

From the position of the EPO so far, it would appear that the response to the R.161EPC communication is treated as a formality rather than a substantial matter. Hence, it would appear (untested!) that any comment or amendment filed in response to the “A” communication would tick the formalities officer’s boxes (so-to-speak).

Downside of Not Responding (Substantially)

The Guidelines state that “the Examining Division will issue at least one communication according to Art.94(3) and Rule 71(1),(2) in subsequent examination proceedings”. It would seem common sense to state that a substantial response early in the procedure (on entry / in reply to the R.161 EPC communication) would at least allow two substantive replies before Oral Proceedings (and possibly paint you in a more favourable light).

Additionally, new Rule 137(2) EPC only allows you to amend of “your own volition” in reply to the R.161 EPC communication. If you wait until Examination to file a substantive amendment there is a risk that the Examining Division will disallow the amendment.

R.137(4) EPC – Basis for Amendments

The EPO seem quite hot on issuing one of these. My guess it will occur when the Examining Division get hold of the case without too much thought. I would recommend indicating basis when filing amended claims on regional phase entry or filing such basis in response to any R.161 EPC communication to avoid a later R.137(4)EPC communication (and its one month time limit).

New EPO Rules – Transitional Provisions

Just to remind all those EPA’s out there, Article 2(2) of Decision of the Administrative Council of 25 March 2009 amending the Implementing Regulations to the European Patent Convention (CA/D 3/09) states:

New Rule 62a, Rule 63 as amended by Article 1, paragraph 2, of this decision, new Rule 70a and Rule 137 as amended by Article 1, paragraph 7, of this decision shall apply to European patent applications for which the European search report or the supplementary European search report is drawn up on or after 1 April 2010.

The date the “European search report or the supplementary European search report is drawn up” is, according to Guidelines for Examination B-X 10:

The date on which the search report was drawn up is indicated in the report. This date should be that of the drafting of the report by the examiner who carried out the search.

Summary: Go by the date in the search report, not the date of mailing of the search report.