Transcript EPO-Rule-Changes-2010

EPO RULE CHANGES
2010
Nicholas Fox
EPO Rule Changes
• Changes in search procedures
• Changes to divisional practice
• Changes to examination procedure
CHANGES IN EPO SEARCH
PROCEDURES
Reasons not to search
• Lack of unity
• Lack of statutory subject matter
• Claims too broad for a meaningful
search
• Claims too unclear
• Too many independent claims
Claims unclear
• EPO will ask for clarification of
what is to be searched
• Response due within 2 months
• If clarification sufficient, EPO will
use that to conduct the search rather
than the wording of the claims
• Otherwise no search conducted
Too many independent claims
• Process similar to US restriction
requirement
• Election of claims due within 2
months
• EPO will search only the elected
claims or if no election made just the
first independent claim in each
category
Problems
• No appeal when the search is
undertaken – can only object later during
examination
• Any unsearched claims must be deleted
from the application unless Examining
Division persuaded restriction was in error
• Any amendments must still be based on
the content of the application as filed
An example
1) A cat flap pre-activated using a time
machine.
2) A cat flap lifted using anti-gravity plates.
3) A cat flap powered by a perpetual
motion device.
Result
• Too many independent claims
• EPO will ask which is to be searched
• Result only one claim searched
• Other claims must be deleted
Second attempt
1) A cat flap.
2) as 1 pre-activated using a time
machine.
3) as 1 lifted using anti-gravity plates.
4) as 1 powered by a
device.
perpetual motion
Result
• EPO object claim 1 too broad to search/
the invention to be searched is unclear
• EPO will ask for clarification of invention
• Result only one claim searched
• Other claims must be deleted
Solution
• Claims must be in European style on
filing to avoid having to pay extra search
fees/ file divisional applications
• Must draft claim 1 to cover unifying
inventive concept
• Normally only independent claim allowed
per category e.g. method, apparatus etc.
• Only very limited exceptions e.g. plug and
socket, transmitter/receiver inventions
CHANGES TO DIVISIONAL
PRACTICE
New deadline for filing divisional
applications
1) Within 24 months from first communication
from Examining Division on the earliest
application
2) Within 24 months from when a lack of
unity objection is raised for the first time
3) Divisional applications can still be filed on
any pending application up until 10.1.2010
Example 1- First Examination Report
before October 1, 2008
• 3.1.2008 – 1st Examination Report
• 3.1.2010 – 2 year anniversary
(i.e. before 10.1.2010)
Deadline for filing divisional applications
10.1.2010
Example 2 - First Examination Report
after October 1, 2008
• 6.1.2009 – 1st Examination report
• 6.1.2011 – 2 year anniversary of
1st examination report
(i.e. after 10.1.2010)
Deadline for filing divisional applications is
2 year anniversary in this case 6.1.2011
Example 3 – Deadline extended by
late lack of unity objection
• 6.1.2009 – 1st examination report on parent
application not raising lack of unity
• 5.1.2010 – Divisional filed
• 6.1.2011 – 2 year anniversary– normal deadline
for filing any further divisionals
• 10.1.2013 – Lack of unity objection raised for the
first time in examination report on
divisional application
Deadline for filing divisional of divisional
extended to10.1.2015
The BIG problem
Divisional filing deadline is NOT extended by an
unsearched subject matter objection
Example:
6.1.2009 – 1st examination report
6.1.2011 – 2 year anniversary of 1st examination
report – divisional deadline
10.1.2011 – Unsearched subject matter objection
Not possible to file a divisional application to
protect unsearched subject matter
Action required now
• All existing applications must be
checked now to see if any divisional
filings are required
• Deadline for most older cases will be
October 1, 2010 after which no further
divisional filings can be made
More recent cases
• Going forward you will have 2 years
notice of the deadline for filing divisional
applications
• First examination report from the
Examination Division triggers deadline for
all cases in a family
• N.B. EESR issued with search report is
not issued by the Examination Division
Late divisionals
• Extensions caused by the EPO raising
lack of unity at a late stage will be rare
• Normally late objections will only arise if
new prior art is discovered which
invalidates unifying concept of claim 1
• Examining Division need not object to
lack unity if other grounds of objection
exist so manufacturing a late lack of unity
objection will be difficult
Strategy
• If ESSR raises a lack of unity objection
on an initial filing you should amend the
claims to overcome the objection before
the first letter from the Examining Division
to preserve the possibility of extensions
• Conversely if a lack of unity objection is
raised on a divisional application
arguments should be presented so the
Examining Division can trigger an
extension
CHANGES TO EXAMINATON
PROCEDURE
European Extended Search Report
• EESR will now set a deadline for
response
• This is the only opportunity to make
amendments as of right
• Examining Division can issue a
Summons to Oral Proceedings as next
step if response is not satisfactory
Basis for amendment
• EPO have always required attorneys to
provide basis for any amendments made
• Rules introduce a new power to set a
1 month deadline for correcting the
deficiency if basis is not identified or
insufficiently identified
• The 1 month deadline can only be
extended using further processing and
payment of a fee
Euro-PCT applications
• If EPO was ISA or IPEA, must respond
to objections raised by EPO during the
International Phase when entering
regional phase
• If no response filed on entry EPO will set
1 month deadline for filing a response
• The 1 month deadline can only be
extended using further processing and
payment of a fee
Summary
• Urgent action required to establish if any
divisional applications need to be filed on
older cases
• EPO is reducing the opportunities to make
changes before a Summons to Oral
Proceeding is issued
• Restrictions on divisional applications
remove the options for keeping applications
pending or for changing tack later on during
prosecution
NICHOLAS FOX
[email protected]