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.

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). “