Posts Tagged ‘EPO Rule Changes’

Huzzah.

The Administrative Council of the European Patent Office has decided to accept a change to Rule 36 EPC to remove the 24-month time limit for filing divisional applications.

Update: The actual decision has now been published and can be found here: http://www.epo.org/law-practice/legal-texts/official-journal/ac-decisions/archive/20131024a.html .

A draft of the decision is set out below:

Article 1
The Implementing Regulations to the EPC shall be amended as follows:

1. Rule 36(1) shall read as follows:

“(1) The applicant may file a divisional application relating to any pending earlier European patent application.”

2. The following paragraph 4 shall be added to Rule 38:

“(4) The Rules relating to Fees may provide for an additional fee as part of the filing fee in the case of a divisional application filed in respect of any earlier application which is itself a divisional application.”

3. Rule 135(2) shall read as follows:

“(2) Further processing shall be ruled out in respect of the periods referred to in Article 121, paragraph 4, and of the periods under Rule 6, paragraph 1, Rule 16, paragraph 1(a), Rule 31, paragraph 2, Rule 36, paragraph 2, Rule 40, paragraph 3, Rule 51, paragraphs 2 to 5, Rule 52, paragraphs 2 and 3, Rules 55, 56, 58, 59, 62a, 63, 64 and Rule 112, paragraph 2.”
Article 2

1. This decision shall enter into force on 1 April 2014.
2. It shall apply to divisional applications filed on or after that date.

The proposals are described in more detail in this document kindly circulated by the President of the European Patent Insititute.

Basically, Rule 36(1) EPC reverts back to its old form – from 1 April 2014 you will be able to file divisional applications as long as the parent application is still pending. [Subject to the caveat that an official version of the decision is yet to be published.]

Extra charges are being introduced, but these will only apply to divisionals of divisionals (i.e. “second generation divisional applications”). The exact charges have not been decided yet.

Although some will cry “u-turn” (not European Patent Attorneys though, we are all too polite), it is good to see the Administrative Council listen to feedback from users of the current system and act accordingly.

Feedback

Out of 302 responses received to a survey in March 2013 only about 7% sympathised with the current system. The negative consequences of the current system are clear:

It requires applicants to decide too early whether to file divisional applications (146 responses), e.g. before being sure of their interest in the inventions or their viability, prior to the possible emergence of late prior art, before having had the opportunity to dispute a non-unity objection, or even before being sure of the subject-matter for which (unitary) patent protection will be sought. Thus, the applicant is forced to file precautionary divisionals, thereby increasing the costs associated with prosecution (143 responses).

The time limits have not met their objectives (102 responses), since there has been no reduction in the number of divisionals, legal certainty has not increased, long sequences of divisionals are still possible, or there has been no acceleration of examination.

The time limits are complex and difficult to monitor, creating an additional burden and further costs for applicants and representatives (89 responses).

The negative effects of the introduced time limits are increased by the slow pace of examination (82 responses).

To address these consequences, the message from users was also clear: 65% voted for the reinstatement of the previous Rule 36 EPC. To their credit, it appears that the Administrative Council has done just that.

Reading between the lines it seems that enquiries from users of the system regarding the 24-month time limit and its operation were also causing a headache for the European Patent Office.

More Divisionals After Refusal?

An interesting aside is that it appears G1/09 is gaining ground. The document prepared for the Administrative Council stated:

This practice [of filing divisional applications before oral proceedings], though, has lost most of its basis since the Enlarged Board of Appeal issued its decision G 1/09 on 27 September 2010, in which it came to the conclusion that a European patent application which has been refused by a decision of the Examining Division is thereafter still pending within the meaning of Rule 25 EPC 1973 (current Rule 36(1) EPC) until the expiry of the time limit for filing a notice of appeal.

Consequently, applicants may file divisional applications after refusal of the parent application, without the need to resort to precautionary filings before oral proceedings

These “zombie” divisional applications always gave me the creeps – I would prefer to file before refusal. It will be interesting to see whether the practice of filing divisional applications in the notice of appeal period will now increase.

This sneaked under my radar so I will post it here. The European Guidelines for Examination are now revised annually. The most recent version was issued on 20 September 2013.

Details of the updates and a link to the most recent Guidelines can be found here: – http://www.epo.org/law-practice/legal-texts/official-journal/information-epo/archive/20130920.html

As highlights:

A nice little trick is that there is now a “track changes” style “show modifications” checkbox on the HTML Guidelines site. This shows the recent edits.

Just be careful: if you refer to a PDF copy, it would be easy to slip up by looking at the wrong edition. My tip is to use the HTML where you can.

Just a quick reminder that the Rule 161 and 162 EPC periods are to be extended to 6 months from 1 May 2011.

Updated Rules 161 and 162 EPC shall apply to Euro-PCT applications in respect of which no communication
under existing Rules 161 and 162 EPC has been issued by 1 May 2011.

The EPO Notice setting this out can be found here: http://archive.epo.org/epo/pubs/oj010/12_10/12_6340.pdf .

This is a welcome change. Before, the time period was 1 month, which was rather onerous for applicants. The 6 month time limit will likely also help the EPO, as more care and consideration can be put into substantive responses to outstanding objections on applications.

(As a quick reminder the Rule 161 EPC period sets a time limit in which a response needs to be filed at the EPO addressing any deficiencies noted in the PCT Search Report Written Opinion or in the International Preliminary Examination Report. This may be comments in a letter and/or amendments. If this is not filed the European application is deemed to be withdrawn. Rule 162 EPC sets a period in which to pay excess claims fees. See previous post: here.)

Following on from my post here, the President of the EPO has decided that an applicant will not need to file search results under R.141(1) EPC if the priority application was first-filed in one of:

  • US,
  • UK, or
  • Japan.

These will be exchanged between the patent offices automatically. In most cases, US, British and Japanese attorneys (and the majority of their clients) can thus let out a sigh of relief.

As set out here, this adds to the exemptions available when the search reports were drawn up by the EPO (e.g. EPO search on international or national applications).

Still from January it is worth checking the state in which a  priority application was filed as a general procedural step.

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.

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.

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.

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). “

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).

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.