Platform Formalities Officers
1st Annual Formalities Officers Conference
Rijswijk, 11 March 2010
Raising the Bar and EPC changes
as from 1 April 2010
Luise Zimmermann
European Patent Office
Content
•
Raising the Bar
• Clarification of scope of application prior to search
• Mandatory reply to negative ESOP/WO-ISA/IPER
• Indication of basis of amendments
•
Voluntary/mandatory divisional applications
•
Increase of procedural and administrative fees
•
Other changes
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Raising the Bar
Is definitely not this:
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Raising the Bar
More this:
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Raising the Bar
"Grant patents only for innovations with sufficient inventive
merit meeting the needs of society".
– Right benchmark for inventive step
– Clarity regarding subject matter of search
– Substantive examination within scope of the subject
matter searched
– Focussed search & examination procedure
– Greater legal certainty with respect to patented subject
matter
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Raising the Bar
Clarification of scope of application prior to search
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Rule 62a and Rule 63 EPC
New Rule 62a EPC - multiple independent claims
Amended Rule 63 EPC - clarification of complex applications
The legal principle
If the application ....
then the examiner will invite the
applicant to indicate, within a period
of two months (non-extendable), ....
contains an unallowable number
of independent claims per
category (R. 62a EPC),
the claims complying with Rule 43(2)
EPC on the basis of which the search
is to be carried out.
is complex to such an extent that
it is not possible to carry out a
meaningful search (R. 63 EPC),
the subject-matter to be searched.
Clarification of scope of application prior to search
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Rule 62a and Rule 63 EPC
•
Examiners are facing increasing numbers of applications
with multiple independent claims in one category and/or
which pose major complexity problems.
•
Under the new provisions, point in time for raising an
objection under Rule 43(2) EPC (multiple independent
claims) is advanced from end of search to beginning of
search.
•
Potential scope of protection more clearly defined at search
stage rather than in examination or grant phase only,
ensuring that the search is focussed on the subject matter for
which protection is claimed.
Clarification of scope of application prior to search
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Rule 62a and Rule 63 EPC
•
The EPO invitation to clarify can refer to an objection under
– Rule 62a only (Form 1056a)
– Rule 63 only (Form 1056b)
– both Rule 62a and Rule 63 (Form 1056c)
v In each of these communications, the applicant can be informed,
in addition, about a problem with unity of the invention (Rule 64)
v Each invitation can be accompanied by a reasoning (Form 2906)
•
Time limit for response: two months (non-extendable)
•
New time limit of Rule 64(1) EPC - payment of further search fees in
case of non-unity search report: also two-months (non-extendable)
Clarification of scope of application prior to search
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Rule 62a and Rule 63 EPC
In case of no reply (in due time) ....
•
•
•
the search report shall be drawn up on the basis of the subject
matter of the first independent claim in each category
(R. 62a EPC)
a partial search report or possibly only a reasoned declaration
issued (R. 63 EPC).
Legal remedy in case of non-observance of time limit: request
for re-establishment of rights (Art. 122, R. 136 EPC)
The new procedure applies to European patent applications for
which the (supplementary) European search report has not
yet been drawn up on 01.04.2010.
Clarification of scope of application prior to search
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Raising the Bar
Mandatory reply to negative ESOP/WO-ISA/IPER
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Raising the Bar
New Rule 70a EPC - response to European Search Opinion (ESOP)
Amended Rule 161 EPC - response to WO-ISA / IPER
The legal principle
If the EPO has noted
deficiencies with respect to
patentability ...
then the applicant will be invited to
correct the deficiencies / file any
amendments ...
in the opinion accompanying the
European search report,
within six months of publication of
the European search report (R.
70a(1), (2) EPC).
in the opinion accompanying the
supplementary European
search report,
within six months of notification of
the invitation to declare the
maintenance of the application (R.
70a(2) EPC).
in the WO-ISA / IPER,
within one month of notification of
the communication under Rule 161(1)
EPC.
Response to ESOP/WO-ISA/IPER
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Raising the Bar
•
In the ESOP/WO-ISA/IPER, the examiner already mentions
the reasons and objections why the European patent
application (and the invention to which it relates) does not
meet the requirements of the EPC.
•
There has so far been no obligation for the applicant to
reply prior to the start of substantive examination.
ü Where no objections are raised in the ESOP/WO-ISA/IPER, also
under the new provisions no reply is mandatory, but applicant is
free to comment and file any amendments (Rule 137(2) EPC).
Response to ESOP/WO-ISA/IPER
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Rule 70a EPC – Response to ESOP
EP applications and
Euro-PCT applications with supplementary search (EPO is not ISA)
Ø Invitation to file substantive response to ESOP (Rule 70a(1), (2)
EPC) is included as a new element in existing EPO
communications:
v EP: communications despatched after publication of search report:
• EPO Form 1081: examination fee outstanding (R. 70(1) EPC) or
• EPO Form 1082: maintenance of application outstanding
(R. 70(2) EPC) or
• EPO Form 1083: information about publication of search report
(R. 69 EPC)
Ø time limit = six months after publication of search report
v Euro-PCT: communication despatched after establishment of
supplementary European search report
• EPO Form 1224: maintenance of application outstanding
(R. 70(2) EPC)
Ø time limit = six months after notification of communication
Response to ESOP
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Rule 70a EPC
•
Rule 70a EPC applies to European patent applications for
which the extended (supplementary) European search report
is drawn up on or after 01.04.2010:
Ø Where search opinion is negative: response is mandatory
Ø Where search opinion is positive: opportunity to comment /
file amendments
ü Applications where the applicant has waived his right to receive a
communication pursuant to Rule 70(2) EPC (valid request for
examination before transmission of the search report) are not
concerned as no ESOP is sent during the search phase.
Response to ESOP
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Rule 161 EPC - Response to WO-ISA / IPER
Euro-PCT applications without supplementary EP search
(EPO is ISA and, if preliminary examination, also IPEA)
After performance of the acts for entry into the European
phase (R. 159(1) EPC), an invitation to respond to/
comment on the opinion established by the EPO in the
international phase (R. 161(1) EPC) is to be despatched
before European phase examination starts
Any amendments/comments filed or indications made
on entry in the European phase (Form 1200) with
respect to the application documents on which EP phase
processing is to be based are to be taken into account:
• Amended claims under Article 19 PCT
• Amended description/claims/drawings under Article 34 PCT
• Amended description/claims/drawings filed on entry
into the EP phase (R. 159(1)(b) EPC)
• Comments with respect to the WO-ISA / IPER only
Response to WO-ISA / IPER
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Rule 161 EPC
•
Where the EPO has established a negative WO-ISA or
IPER, the applicant must file a substantive response for the
European phase, within a time limit of
• one month from notification of the communication
pursuant to Rule 161(1) EPC (Form 1226A).
•
Amendments or comments filed on entry into the European
phase (Form 1200), or the indication of the documents that
are to form the basis of European phase processing, may be
a valid response to a negative WO-ISA or IPER (Guidelines
for Examination in the EPO, C-VI, 3.5.1)
•
Where no response obligatory (already filed or positive
WO-ISA / IPER), the applicant is given the opportunity to
comment / file amendments (Form 1226B)
Response to WO-ISA/IPER
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Rule 161 EPC
•
Amended Rule 161 EPC applies to European patent
applications for which no communication under Rule 161
has been issued on 01.04.2010.
Ø Where EPO WO-ISA / IPER negative and no response
already filed on entry into the European phase: substantive
response mandatory (R. 161(1) EPC, Form 1226A)
Ø Where EPO WO-ISA / IPER positive, or negative with
response already filed: opportunity to comment / file
amendments (R. 161(1) EPC, Form 1226B)
Ø Where EPO has not acted as ISA: opportunity to file
amendments as basis for supplementary European search
(R. 161(2) EPC, Form 1226C)
Ø In all cases, combined communication under Rule 161 and
Rule 162 (invitation to pay any claims fees due)
Response to WO-ISA/IPER
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Rule 70a and Rule 161 EPC
Failure to respond to a negative ESOP / WO-ISA / IPER
in due time:
Ø Application deemed withdrawn
Ø Legal remedies:
– Request for a decision (R. 112 (2) EPC)
– Request for further processing (Art. 121, R. 135 EPC)
•
One loss of rights communication (R. 112(1) EPC) may refer to
several losses of rights (e.g. in EP applications: non-payment of
examination + designation fees, non-response to ESOP)
– more than one further processing fee may be due!
Response to ESOP/WO-ISA/IPER
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Raising the Bar
Indication of the basis of amendments
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Raising the Bar
Amendments - Modified Rule 137 EPC
Rule 137(1):
No amendments allowed before receipt of search report (no change).
Rule 137(2):
Only one opportunity for own volition amendment:
• In response to Rule 70a / 161 EPC communications; or
• In case Rule 70(2) EPC communication waived - until response
to first communication under Article 94(3) EPC
Rule 137(3):
Further amendments require consent of Examining Division
Rule 137(4):
Applicant to identify and provide basis for all amendments
• Period for response to Examining Division's communication
requesting compliance = one month
• Failure to respond in due time = application deemed withdrawn
Rule 137(5): Former Rule 137(4) EPC + amended claims may not relate to subject
matter not searched as a result of application of Rule 62a or 63 EPC.
Indication of basis of amendments
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Indication of basis of amendments
Amended Rule 137(4) EPC
Identification of amendments and indication of their basis
The legal principle
§
§
§
§
Whenever the applicant files amendments, he must identify
them and indicate the basis for the amendments in the
application as originally filed.
In the absence of the required identification or indication, the
examining division may request the correction of the
deficiency within a period of one month (non-extendable).
If no reply is received, the application will be deemed to be
withdrawn (Art. 94(4) EPC).
The applicant has the option to request further processing
(Art. 121, R. 135 EPC).
Indication of basis of amendments
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Indication of the basis of amendments
§
Basis of amendments is commonly indicated by many
applicants. However, if not done, clarification can be timeconsuming for the examiner.
§
Amended Rule 137(4) EPC provides an instrument for
requesting compliance with best practice (new invitation:
EPO Form 2909)
§
Procedure applies to
• European patent applications with (supplementary) EP
search report drawn up on/after 01.04.2010
• Euro-PCT applications for which the (supplementary) ISR
is drawn up by the EPO as ISA on/after 01.04.2010
(supplementary ISR only after 01.07.2010)
Indication of basis of amendments
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Voluntary/mandatory divisional applications
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Divisional applications
Amended Rule 36(1) EPC
•
Two requirements must be met when filing a divisional
application:
(i) the application to be divided must be pending and
(ii) at least one of the two periods mentioned below must not
yet have expired:
(a) the period for voluntary division under Rule
36(1)(a) EPC or
(b) the period for mandatory division under Rule
36(1)(b) EPC, where applicable.
Divisional applications
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Voluntary division
•
Voluntary division if:
– the earlier application is pending
– non-expired 24-month time limit from
the Examining Division's first communication in respect of the
earliest application for which a communication has been issued
•
What is the Examining Division's first communication?
– Communication under Article 94(3) and Rule 71(1), (2) EPC or,
where appropriate, Rule 71(3) EPC
•
What if there is a sequence of European divisional applications?
– Time limit calculated from issue of Examining Division's first
communication for the earliest application in the sequence
•
Does the '10-day rule' for calculation of the time limit apply?
– Yes
Divisional applications
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Mandatory division
•
Mandatory division?
– earlier application pending
– non-expired 24-month time limit from
any communication in which the Examining Division raises a
specific objection under Article 82 EPC for the first time
•
What could be an event starting such a 24-month time limit?
– E.g.: notification of summons to oral proceedings, date of oral
proceedings, telephone interview (see Guidelines, A-IV, 1.1.1.3)
•
Can a new 24-month time limit be triggered?
– Only if a communication from the Examining Division raises a new,
different non-unity objection
Divisional applications
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Second and subsequent-generation divisional applications
voluntary divisional of EP2 possible
voluntary divisional of EP1 possible
24M
24M
Divisional applications
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Language of divisional applications
Amended Rule 36(2) EPC
•
A divisional application must be filed in the language of the
proceedings of the earlier (parent) application.
•
If the latter was not in an official language of the EPO, the
divisional application may be filed in the language of the
earlier application (translation within two months of filing the
divisional).
Divisional applications
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Divisional applications
•
EPO Form 1001 (Request for grant) updated
– Date of relevant communication from which 24-month
period has started running to be indicated
•
In case divisional application is filed outside the 24-month
period, applicant has the option of requesting reestablishment of rights (Art. 122, R. 136 EPC).
Divisional applications
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Divisional applications
Entry into force:
Amended Rule 36(1) and (2) EPC
applies to European divisional
applications filed (= received) on
or after 1 April 2010
Transitional provisions if the newly established time limits
under Rule 36(1) EPC have
expired before 1 April 2010, a
divisional application may still be
filed within six months from that
date (i.e. until 1 October 2010)
if the newly established time limits
are still running on 1 April 2010,
they will continue to do so for not
less than six months (i.e. until 1
October 2010)
Divisional applications
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Increase of procedural and administrative fees
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Fee increase
•
•
•
Decision of the Administrative Council of 28 October 2009 amending the Rules
relating to Fees and adjusting the amount of the reduction in the fee for the
supplementary European search where the international search report was
drawn up by one of the European International Searching Authorities (CA/D
19/09), OJ EPO 2009, 587
Decision of the President of the European Patent Office dated 15 November
2009 revising the Office’s fees and expenses, OJ EPO 2009, 616
Schedule of fees and expenses applicable as from 1 April 2010, Supplement 1
to Official Journal 3/2010
Ø In general, all procedural and administrative fees are affected
Ø New amounts apply to payments made on or after
1 April 2010 (= date of payment, Art. 7 RFees)
Ø If old amount is paid on or after 1 April 2010
Ø by deposit account: ex-officio correction (Form 2935)
Ø by bank transfer, within six months after entry into force:
two-month period for paying shortfall (Form 1166)
ü Attention automatic debiting procedure: fees are debited on last day of
period for payment!
Fee increase 01.04.2010
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Fee-related forms
•
New paragraph inserted into forms mentioning a fee amount:
Fee increase 01.04.2010
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Other changes
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Other changes
•
Montenegro is new extension state as from 1 March 2010
•
Albania will be the 37th EPC contracting state as from
1 May 2010
•
EPO as International Searching Authority will perform
supplementary international searches (Rule 45bis PCT) as
from 1 July 2010
•
.....
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www.epo.org
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Raising the Bar and EPC changes as from 1 April 2010
Any questions?
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Thank you for your attention!
Luise Zimmermann
Directorate Practice and Procedure
EPO The Hague